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RECENT CASE LAWS ON SECTION 9(1) (A), SECTION 9(1) (B), AND SECTION 11 OF THE

TRADEMARKS ACT

Following are the recent cases throwing light on the analysis of aforementioned sections:

1. M/s Nandhini Deluxe v. Karnataka Cooperative Milk Federation1

Factual Analysis (Ratio can be culled out of it): Though there is a phonetic similarity insofar
as the words NANDHINI/NANDINI are concerned, the trade mark with logo adopted by the
two parties are altogether different. The manner in which the appellant has written NANDHINI
as its mark is totally different from the style adopted by the respondent for its mark
‘NANDINI’. Further, the appellant has used and added the word ‘Deluxe’ and, thus, its mark
is ‘NANDHINI DELUXE’. It is followed by the words ‘the real spice of life’. There is device
of lamp with the word ‘NANDHINI’. In contrast, the respondent has used only one word,
namely, NANDINI which is not prefixed or suffixed by any word. In its mark ‘Cow’ as a logo
is used beneath which the word NANDINI is written, it is encircled by egg shape circle. A bare
perusal of the two marks would show that there is hardly any similarity of the appellant’s mark
with that of the respondent when these marks are seen in totality.

2. Nakshatra Distilleries and Breweries v. Radico Khaitan Ltd.2

Issue: The issue which falls for consideration is the interpretation of the provisions of
Section 9(1)(b) of the Trade Mark Act, 1999 as to whether the said provision prohibits the
registration of the trade mark which are in the nature of geographical names in generality or
whether by way of change in the language of the provision of Section 9(1)(b) restricts the
applicability of the provision relating to absolute ground for refusal only relating to the marks
or indication which may serve in trade to designate the geographical origin of the goods.

94. For the sake of comparison of the two provisions, Section 9(1)(b) of the Trade and
Merchandize Mark Act, 1958 and corresponding provision in Section 9(1)(b) of Trade Marks
Act, 1999 are reproduced hereinafter:

Section 9:

Requisites for registration in Parts A and B of the register.

(1) A trade mark shall not be registered in Part A of the register unless it contains or
consists of at least one of the following essential particulars, namely:—

(a) the name of a company, individual or firm represented in a special or particular


manner;

1
(2018) 9 SCC 183.
2
2018 SCC Online IPAB 14.

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(b) the signature of the applicant for registration or some predecessor in his business;

(c) one or more invented words;

(d) one or more words having no direct reference to the character or quality of the
goods and not being, according to its ordinary signification, a geographical name
or a surname or a personal name or any common abbreviation thereof or the name
of a sect, caste or tribe in India;

(2) A name, signature or word, other than such as fall within the descriptions in clauses
(a), (b), (c) and (d) of sub-section (1), shall not be registrable in part A of the register
except upon evidence of its distinctiveness.

95. Section 9((1)(b) of the of the Trade and Merchandize Mark Act, 1958, which is
reproduced as under:

(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;

96. From the reading of both the provisions together, it is clear that under the provisions of
Section 9(1)(b) of the Trade & Merchandize Mark Act, 1958, a trade mark was not allowed to
register in Part A if it contains any geographical name. As against the same, the provisions of
the amended Act, 1999 reads that a trade mark shall not be registered if it consists exclusively
of marks or indications which may serve in trade to designate the kind, quality, geographical
origin of the goods. Therefore, it is clear that the Trade Mark Act of 1999 has structurally
altered the provision of Section 9 including its wordings with respect to registrability of the
geographical names. Whereas on the plain reading of Section 9(1)(b) of the trade &
Merchandize Mark Act, 1958, it can be seen that what were prevented from registration were
the trade marks containing geographical names as against the same, the reading of the provision
of Section 9(1)(b) of the Trade Marks Act, 1999 suggests that the prohibition with respect to
registrability is now attracted only in relation to marks or indications which may serve in trade
to designate the geographical origin of the goods.

97. In simple and plain words, what was earlier prohibited from registration is the trade
mark containing a geographical name per se however, there exists a comparative shift in the
approach and now what are prohibited under the Trade Marks Act is the marks or indications
which may designate the geographical origin of the goods. This departure from prohibiting the
geographical name per se in the earlier Act to preventing only those marks which qualify the
goods-place association test is in accord with the change in approach with which the Trade
Marks were registered internationally. This shift in approach is not followed merely in India
but also in US, UK and other common law countries. However, this goods-place association

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test requirement is not merely required to be satisfied in presenti but also the assessment is left
for the future ability of the geographical name or indication which may serve as a geographical
origin of the goods as we shall see in our discussion below.

98. If once sees the provision of Section 9(1)(b) of the Trade Marks Act, 1999, relating to
absolute grant for refusal, it is clear that the said provision is in consonance with Article 3 of
EU directive No. 89/104/EEC and also Section 3 of UK Trade Marks Act, 1994 both of the
provisions which are similar in language

For reference purposes:

99. The provisions relating to the EEC directive of Article 3(1)(c) has been interpreted by
the European Court of Justice in the case of Windsurfing Chiemsee Produktions - und Vertriebs
GmbH (WSC) v. Boots-und Segelzubehör Walter Huber & Franz Attenberger, (2000) Ch.
523 (westlaw report) which has been relied upon by the respondent in the present case wherein
the ECJ made certain significant findings in its judgment relating to prohibition concerning the
registration of geographical name. The crux of the said findings can be summarized as under:

(a) Article 3(1)(c) which is in consonance with Section 9(1)(b) of the Trade Marks Act,
1999 (with certain words here and there, however, the operative part remaining the
same) is aimed at serving a public interest that the descriptive signs or indications
relating to categories of goods of services in respect of which the registration is applied
may be freely used by all and cannot be reserved for one undertaking alone. (Kindly see
para 25 of the report)

(b) With respect to signs or indications which may designate geographical origin of
category of goods in respect of which the registration is applied for, the ECJ holds that
the geographical names of such nature may be available in public interest as associating
the goods with that place leads to favourable response of the consumer. (Kindly see
para 26 of the report)

(c) The applicability of Article 3(1)(c) of the directive which is in almost parimateria with
Section (9)(1)(b) of the Trade Marks Act, 1999 is not merely confined to registration
of geographical name as a trade marks solely where they designated a specific
geographical locations which are already famous or known for particular category of
goods concerned and has already associated with the minds of the relevant class of
persons including trade and average consumer but it is also applicable in the cases
where such association is likely to be possible or where the mark is susceptible to be
designating the geographical origin of the goods in the future and such connection can
be established in future also. The ECJ placed reliance to the language of Article 3(1)(c)
of EC directive which states ‘indications, which may serve to designate….
Geographical origin’. It is due to the usage of the wordings ‘may serve to designate’

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clearly makes the provisions applicable to geographical names which are likely to attain
association of geographical origin of the goods in the future as well as against the one
which are already known. (Kindly see paras 29, 30 and 31 of the report.)

(d) With respect to the mark's/geographical name's ability/capability to attain such an


association in the minds of the public in future, the ECJ has held that the competent
authority shall test the said geographical name by taking various variables into account
including the degree of familiarity amongst such persons with that name, with the
characteristic of the place designated by the name and with the category of the goods
concerned. Therefore, the assessment of future association of the geographical name
with the origin of the goods has to be tested by inquiring as to how familiar the said
name is amongst the consumer and trade what are the characteristic of the said place
designated by the name and whether the said place has got any association with the
category of goods concerned or not and whether it is probable on account of taking into
the said variables into consideration any such association, in future. All these variables
can be taken into account on the existence of evidence available on record. (Kindly see
para 31 and 32 of the report.)

(e) Article 3(1)(c) doesn't prohibit, in principle, the geographical names which are unknown
to the relevant class of persons or unknown to the designation of the geographical
location and are unlikely to be believed that the category of goods concerned originate
from there. (Kindly see para 33 of the report)

(f) The connection of geographical location viz a viz the category of goods is not solely
dependent on the basis that the goods are manufactured there. The said connection
could be based upon “other ties” like the goods were conceived there and/or designed
in the geographical location and natural and other ties which allows the public in
general and trade to associate the goods with the geographical origin of that place
including familiarity of the place with certain category of goods etc. Therefore, whether
the goods are actually manufactured there or not is not conclusive of the fact whether
such geographical location can be registered as a trade mark or not as there are other
ties which the goods may have with that location. (Kindly see para 36 of the report)

(g) Where the geographical name is already familiar as an indication of geographical origin
in relation to certain category of goods, the requirement of furnishing the user has to be
both long standing as well as intensive in order to meet the requirement of distinctive
character (Kindly see para 50 of the report).

(h) In assessing the distinctive character of the trade mark in respect of which the
registration has been applied for, the account may be also be taken into consideration
as to the market share held by the mark, how intensive the said market share is,
geographically widespread and long standing user of the trade mark, the amount

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invested by the undertaking in promoting the mark, the proportion of relevant class of
persons who identify the goods originating from particular undertaking because of the
mark, statement of Chamber of Commerce and Industry, etc. If on the basis of all these
factors, the competent authority finds that the relevant class of persons for atleast
significant proportion identifies goods as originating from particular undertaking
because of the trade mark, then it must be held that the requirement for establishing the
distinctive character stands satisfied. (Kind see para 51 and 52 of the report).

100. The above are the guidelines given by ECJ when the issue with respect to registration
of trade mark containing geographical name which is acting as an indication of geographical
origin or is capable of acting as an geographical origin falls for consideration before the
competent authority including the Court or Tribunal. The said guidelines have been followed
by the UK Courts and are also consistent with the amendments carried out in the relevant laws
including the law in India and also on the interpretation of the plain reading of the Act.
3. Superon Schweiss Technik India v. Modi Hi-tech India Ltd.3: This case analyses Section
9 and Section 11 of the Trademark Act, 1999.

Analysis: The very fact that in terms of Section 9 of the Act, there is an absolute ground for
refusal of registration of the trademark, the same clearly is an indication of ordinarily a
disentitlement from claiming exclusive ownership of a descriptive expression as a trademark.

The basis for the plaintiff to succeed in a suit alleging passing off with respect to distinctiveness
of a trademark or getup or other aspects existing for is because of Section 9(1)(a) and Section
11(3)(a) of the Trade Marks Act and these provisions read as under:-

“―Section 9. 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;

........

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 11. Relative grounds for refusal of registration-

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(2018) 250 DLT 308.

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......

(3) A trade mark shall not be registered if, or to the extent that, its use in India is liable to be
prevented--

(a) by virtue of any law in particular the law of passing off protecting an unregistered trade
mark used in the course of trade;”

Analysis: The law therefore is that before passing off can be a basis of cause of action for
plaintiff to succeed it has to be first shown that the plaintiff has achieved a reputation in the
market with respect to its trademark or label or any other aspect, so that the plaintiff can
establish that the trademark or other aspects with respect to which passing off is pleaded have
become distinctive with respect to the goods of the plaintiff. Putting it in other words, unless
the aspects on the basis of which passing off is alleged are such that these aspects are shown to
have exclusive co-relation to the goods of the plaintiff, the plaintiff cannot succeed in proving
distinctiveness and hence cannot succeed on the cause of action of passing off. This is clearly
observed by the Supreme Court in para 12 of Laxmikant V. Patel's case (supra) wherein the
Supreme Court by CS(COMM) 750/2018 page 28 of 36 reference to the judgment in the case
of Oertli v. Bowman (1957) RPC 388, has stated that in an action for passing off based on the
use of a mark or getup it is necessary that the plaintiff should be able to show that the mark or
getup has become by use in the country distinctive of the plaintiff's goods so that use of such
mark or getup by the defendant in relation to any goods of the same kind which is dealt by the
plaintiff, the same will be understood by the public in that country as relatable to the plaintiff's
goods. Meaning thereby that when the goods of the defendant are purchased the customer does
so that as if the goods purchased are of the plaintiff. Clearly therefore the issue of an entitlement
of a plaintiff to succeed in a suit for passing off is by showing that the getup or trade dress or
any other aspect on the basis of which passing off is alleged are such that such getup, trade
dress or any other aspect has acquired distinctiveness and the public associates such trade dress
or getup or other aspects only and only with the plaintiff's goods.

4. Christian Louboutin Sas v. Abubaker4

Analysis: Unless there are combinations of colours i.e. more than one colour is sought to be
used as a trademark, it cannot be held that a single colour is a mark, and since a single colour
cannot be a mark it therefore cannot be a trademark under the Trade Marks Act. Once a single
colour cannot be a mark and therefore cannot be a trademark, the issue of a plaintiff claiming

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(2018) 250 DLT 475.

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use of a single colour as a trademark by getting benefit under the Proviso to Section 9(1) of the
Trade Marks Act read with Section 32 of the Trade Marks Act will not arise, because these
provisions will only 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.

5. ITC Ltd. v. Britannia Industries5: The case deals with an analysis of the term “distinctive
character” present in the proviso to Section 9.

Section 9 (1) (b) of the Trademarks Act, 1999 provides as follows:

“Absolute grounds for refusal of registration-

(1) The trademarks—

(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;

... 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.”

Analysis: The case has settled the principle regarding the “term of use” with respect to a
trademark acquiring distinctiveness- "to acquire secondary meaning, it is not necessary that
product is in the market for number of years. If a new idea is fascinating and appeals to the
consumers, it can become a hit overnight". This case law settles the principle of acquired
distinctiveness. The goods associated with a trademark do not have to be in market for a certain
number of years for the trademark to have acquired distinctiveness. A trademark can acquire
distinctiveness, even overnight, and therefore it depends from case to case. There is no fixed
time frame for a trademark to have acquired distinctiveness. It reiterates the same principle as
laid down in the case of Ishi Khosla v. Anil Aggarwal6.

6. Lal Babu Priyadarshi v. Amrit Pal Singh7

5
CS (COMM) 1128/2016.
6
2007 SCC OnLine Del 126.
7
(2015) 16 SCC 795.

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Analysis: Section 9 stipulates that the trade marks which are devoid of any distinctive character
or which consist exclusively of marks or indications which may serve in trade to designate the
kind, quality, quantity, intended purpose, values, geographical design or the time of production
of goods or rendering of the services or other characteristics of the goods or service or which
consist exclusively of marks or indications which have become customary in the current
language or in the bona fide and established practice of the trade shall not be registered, unless
it is shown that the mark has in fact acquired a distinctive as a result of use before the date of
application.

The Court relied on Clause 13.3 of the Eighth Report on the Trade Marks Bill, 1993 submitted
by the Parliamentary Standing Committee which provided that any symbol relating to gods,
goddesses, places of worship should not ordinarily be registered as a trade mark.

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