DIFFERENCE BETWEEN SECTION 9 AND SECTION 11 OF THE TRADE MARKS ACT, 1999

Although both Section 9 and Section 11 deals with the grounds on which a Trade Mark application can be rejected by the Registrar of the Trade Mark, there are basic differences between both.

On the one hand, Section 9 deals with absolute grounds of refusal. These are those grounds which are based on deficiencies that are within Trade Mark that is sought to be registered without any reference to any other Trade Mark. Section 11 on the other hand, is a more referential section i.e. it states grounds for refusal of registration in reference to another, already existing, Trade Mark.

Section 9 has 3 sub-sections that have been dealt with below:

Section 9(1): It deals with deficiencies that are inherent in the Trade Mark that makes it un-registrable. These deficiencies are lack of ability to distinguish the product from other manufacturers, exclusively indication towards the character of the product sought to be Trade Marked and containing customary usage of trade for Trade Mark Purposes. The exception of acquired distinctiveness is provided in this subsection to prevent the fair use of a TM from any undue losses.
Section 9(2): These are grounds based on public consideration such as deceiving or scandalous nature of TM, hurting religious sentiments or containing prohibited emblems.
Section 9(3): These are the grounds that prevent infringement upon a persons’ right to trade by preventing TMs containing exclusively of the natural or technical shape of goods or shapes that provide value addition.

Although Section 11 has 11 sub-sections, only sub-section 1, 2 and 3 give grounds of refusal of registration. Other sub-sections deal various other things.

Section 11(1): It refuses registration if the TM is identical or similar to an existing TM and the goods or services covered by them are also similar or identical.
Section 11(2): It refuses registration when the TM is identical or similar to a well-known TM. A well-known TM allows its owner to forbid the use of his TM for different goods or services as well if he is able to show that such use will be detrimental to his TM.
Section 11(3): It refuses registration if it is forbidden under the Copyright law or any other law for the time being.
Section 11(4): This allows a similar or identical TM to be registered if the owner of the existing TM gives its permission.
Section 11(5): It says that the owner of the existing TM is required to raise opposition in order to get the benefit of sub-clause 2 and 3.         
Section 11(6) & (7):
It contains grounds to decide if a TM is Well-known or not.
Section 11(8): It says that if a TM is well known in one area, it will be considered well known in other.
Section 11(9): It provides the grounds that will not be considered while considering if a TM is well known.
Section 11(10): It puts the onus on Registrar of the TM to protect well-known Tm and to identify bad faith in the parties.
Section 11(11): It gives protection to existing TMs, registered or non-registered, that existed before the Act came into existence.

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