The Trade Marks Act, 1999 gives the Registrar two separate sets of reasons to refuse a mark. Absolute grounds in section 9 are about the mark itself: it cannot tell your goods apart from anyone else’s, it describes them, it misleads, or it is something the law will not register at all. Relative grounds in section 11 are about other people’s rights: an earlier mark that is the same or close enough to cause confusion. The distinction matters because the two are answered in completely different ways. An absolute objection is met by showing the mark does distinguish you, usually through evidence of use. A relative objection is met by showing there is no real risk of confusion, or that the earlier owner does not object.
An objection in the examination report is not a refusal. It is the examiner’s reason for not accepting the mark yet, and you get to answer it. If you would rather have that answer drafted and filed, our objection reply service prepares the response and the supporting affidavit for you.
How the grounds reach you
Under Rule 33 of the Trade Marks Rules, 2017, the examiner checks the application against the Act and searches earlier marks, registered or applied for, for identical or deceptively similar marks covering the same or similar goods or services. Any objection is sent as an examination report. The report usually names the section and clause relied on, for example “section 9(1)(b)” or “section 11(1)”, and for a relative objection it lists the earlier marks found in the search.
Read the clause numbers first. They tell you which argument you need to make and what evidence will help. A report can cite both kinds of ground at once, and each needs its own answer. The reply is due within one month of receiving the report (Rule 33(4)); if the written reply does not satisfy the examiner, a hearing follows (Rule 33(6)).
Absolute grounds: section 9
Section 9 of the Trade Marks Act, 1999 has three parts.
| Clause | What it stops | Typical example |
|---|---|---|
| 9(1)(a) | Marks with no distinctive character | A common surname alone, a plain number, a simple geometric shape |
| 9(1)(b) | Marks made only of words describing kind, quality, quantity, purpose, value, geographical origin or time of production | “Pure Ghee” for ghee, “Fast Courier” for courier services |
| 9(1)(c) | Marks made only of words that have become customary in the current language or trade practice | A word the trade already uses for the product type |
| 9(2)(a) | Marks likely to deceive the public or cause confusion | “Silk” on goods that are not silk |
| 9(2)(b) | Marks likely to hurt religious sentiments of any class or section of citizens | Names or images of deities on footwear |
| 9(2)(c) | Scandalous or obscene matter | Offensive words or images |
| 9(2)(d) | Use prohibited by the Emblems and Names (Prevention of Improper Use) Act, 1950 | National emblems, names suggesting government patronage |
| 9(3) | Shapes that result from the nature of the goods, are needed for a technical result, or give the goods substantial value | The shape of a standard bottle or a functional tool head |
The examples are illustrations, not rulings. Whether a word is “descriptive” depends on the goods: “Apple” describes fruit but not phones.
The proviso that rescues many marks
Section 9(1) carries a proviso: a mark caught by clauses (a) to (c) is still registrable if, before the date of application, it had acquired a distinctive character through use, or it is a well-known mark. This is why evidence of use matters so much for descriptive and weak marks. The proviso applies to section 9(1) only. It does not help with deception, religious sentiment, obscenity, prohibited emblems or the shape exclusions in 9(2) and 9(3).
Note the date. The distinctiveness has to exist before you filed. Use that started after filing does not count under the proviso, which is why a newly coined, inherently distinctive mark is a safer choice than a descriptive one you plan to build up.
Relative grounds: section 11
Section 11(1) refuses a mark where, because of its identity or similarity with an earlier mark and the identity or similarity of the goods or services, there is a likelihood of confusion among the public, including a likelihood of association with the earlier mark. Three things are compared: the marks, the goods or services, and the likely buyer.
- Earlier trade mark includes registered marks, earlier applications (counting priority dates), and marks entitled to protection as well-known marks.
- Well-known marks get wider protection. Under section 11(2), a mark similar to a well-known mark can be refused even for dissimilar goods if its use would take unfair advantage of, or harm, the earlier mark’s distinctiveness or reputation. The Act lists the factors for deciding whether a mark is well-known in section 11(6) to (9), and Rule 124 lets an owner ask the Registrar for that determination.
- Passing off and copyright. Section 11(3) also bars a mark whose use could be stopped under the law of passing off or copyright.
Section 11(5) says the grounds in 11(2) and 11(3) are applied only when the earlier owner raises them in opposition. In practice, the objection you see in an examination report is almost always the section 11(1) conflict found in the Registry’s own search.
What kind of answer fits each ground
A good reply matches the evidence to the clause. Arguing that two marks look different does nothing for a descriptiveness objection, and proof of ten years’ use does not by itself remove a conflict with an identical earlier mark for identical goods.
| Objection | Arguments that fit | Evidence that usually supports them |
|---|---|---|
| Not distinctive, 9(1)(a) | The mark is unusual for these goods; or it has acquired distinctiveness | User affidavit with sales figures, invoices, advertising, media coverage, dated from before the filing date |
| Descriptive or customary, 9(1)(b), (c) | The word is suggestive, not descriptive, for these goods; or it has acquired a secondary meaning | Dictionary and trade usage showing the word is not the ordinary name; the same use evidence as above |
| Deceptive, 9(2)(a) | The mark makes no false claim about these goods | A narrowed specification that removes the goods the mark could mislead about |
| Religious, obscene or prohibited, 9(2)(b)-(d) | The mark does not in fact have that meaning or effect | Explanation of meaning, translation; often a redesign is the realistic answer |
| Shape, 9(3) | The shape is not dictated by the product, function or value | Design alternatives available to competitors; evidence the shape is chosen, not needed |
| Conflict with earlier mark, 11(1) | Marks differ as a whole; goods are different; buyers are careful; the cited mark is not in use | Side-by-side comparison, specification amended to drop overlapping goods, consent letter, evidence of honest concurrent use |
Evidence of use and the user affidavit
Rule 33(2) allows the examiner to consider evidence of use or of distinctiveness. That evidence is normally filed as an affidavit, drawn up in the first person in numbered paragraphs as Rule 120 requires, with the documents as exhibits. Strong affidavits show the mark on the goods or in the service, give year-wise sales or revenue under the mark, show advertising spend and reach, and cover the geography of use. Every exhibit should be dated and should show the mark exactly as applied for.
Consent and honest concurrent use
For a section 11(1) objection, section 11(4) allows registration where the owner of the earlier mark consents, and the Registrar may then register under section 12. Section 12 separately allows more than one owner to register identical or similar marks in cases of honest concurrent use or other special circumstances, subject to conditions. A consent letter or a coexistence agreement with the cited owner is often the most direct answer when the marks really are close. Honest concurrent use needs proof that you adopted the mark in good faith and have used it alongside the earlier mark for a meaningful period.
Narrowing the application
Section 18(4) lets the Registrar accept an application subject to amendments, modifications, conditions or limitations. Deleting the goods that overlap with a cited mark, or limiting the specification to the goods the mark does not describe, can remove the objection without any argument. If part of a composite mark is descriptive, you may also be asked to accept that the registration gives no exclusive right to that part on its own.
Before you file: reading the grounds as a checklist
The same grounds are a useful filter at the naming stage. Ask whether the mark says what the product is, whether competitors would need the word to describe their own goods, whether it suggests a quality the goods lack, and whether anything identical or close already sits on the register for the same or neighbouring goods. A mark that passes those questions rarely needs evidence later. If it does not pass, decide early whether you have, or can document, enough use to rely on the proviso, or whether a more distinctive name is cheaper in the long run. When you are ready to apply, our page on filing a trademark application covers the filing itself.
Complianto (complianto.in), operated by Mentorcorp Private Limited, is a private consultancy and is not affiliated with any government body. We do not issue official documents. We charge a professional fee for application assistance and advisory services. Applicants can apply directly to the government without our fees via the official portals: MCA (mca.gov.in), Income Tax (incometax.gov.in), GST (gst.gov.in), MSME (udyamregistration.gov.in), FSSAI (foscos.fssai.gov.in), Startup India (startupindia.gov.in), and IP India (ipindia.gov.in).
This article is general information, not legal or tax advice.
