Trademark Objection Under Section 9 vs Section 11: What Is the Difference?

Section 9 lists absolute grounds for refusal: reasons that apply whatever else is on the register. Section 9(1) bars marks that are:

• devoid of distinctive character, so customers would not see them as a badge of origin;
• descriptive, consisting exclusively of words or signs that describe the kind, quality, quantity, intended purpose, values, geographical origin or time of production of the goods or services;
• customary in everyday language or the established practices of the trade.

Section 9(2) adds marks that are deceptive or likely to cause confusion, that are likely to hurt religious susceptibilities, that are scandalous or obscene, or whose use is prohibited under the Emblems and Names (Prevention of Improper Use) Act, 1950. Section 9(3) bars certain shapes, such as those that result from the nature of the goods or are needed to obtain a technical result.

How a section 9 objection is answered

The most important point is the proviso to section 9(1): a descriptive or non-distinctive mark is not refused if, before the date of application, it had acquired distinctive character through use, or is a well-known mark. Evidence of use, such as invoices, advertising, sales figures and press coverage, filed with an affidavit, is therefore the strongest answer for an established brand.

For new brands the reply rests on argument: that the mark is suggestive rather than descriptive, that it must be judged as a whole, that it is an invented word, or that similar marks have been accepted. Where that is not enough, the application can be amended or limited: a disclaimer of the descriptive element, a narrower list of goods, or registration of the mark with its distinctive logo.

Section 11 sets out relative grounds: conflicts with other people’s rights. The examiner cites earlier marks found in the Registry’s search and objects under section 11(1) if, because of identity or similarity of the marks and the goods or services, there is a likelihood of confusion on the part of the public, including a likelihood of association with the earlier mark. Section 11(2) protects well-known marks even for dissimilar goods.

The cited marks are listed in the report with their numbers, so the first step is to check each one: whether it is registered, pending, abandoned, refused or removed; who owns it; and what goods it covers. A surprising number of citations fall away on that check alone.

How a section 11 objection is answered

• Differences between the marks. Marks are compared as wholes, visually, phonetically and conceptually, and through the eyes of an average consumer with imperfect recollection.
• Differences between the goods or services. Different nature, purpose, channels of trade and customers can make confusion unlikely even where the marks are close.
• Prior use. Under section 34, a registered owner cannot stop a person who has used the mark continuously from an earlier date.
• Honest concurrent use. Section 12 allows registration of similar marks where both have been used honestly side by side.
• Consent. Section 11(4) lets the Registrar accept a mark if the earlier owner consents, which is how many co-existence agreements are recorded.
• Limiting the specification to remove the goods that overlap.

The procedure is the same for both: a written reply to the examination report within one month of receiving it (rule 33(4), Trade Marks Rules, 2017), and a show cause hearing if the reply does not satisfy the Registrar (rule 33(6)). What differs is the argument and the evidence, as the two sections above explain.

This guide covers only how the two grounds differ. The reply format, the evidence checklist for each ground, the hearing and the options after a refusal are on our examination report reply page.