Can geographical origin be an absolute ground for refusal of

registration?
Absolute grounds for refusal of registration has been given in Section 9 of the Trade Marks
Act,1999. These grounds provide for complete list of things that cannot be registered by the
office of registrar. This list consists of wide variety of trade marks that can’t be registered
owing to their nature or character. This section has been made to avoid any type of confusion
and ambiguity in the mind of the consumer or any other person for that matter while dealing
with the goods or services associated with any trade mark.

Sub Section (1) of Section 9 deals with the marks relating to “geographical origin.”

S.9(1)(b) says- The trade marks 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.

However, this ground of geographical origin is not an absolute ground for refusal of
registration. There is a proviso given in Sub Section (1) of Section 9 which provides that if
there is a distinctive character acquired by the trade mark owing to reasons like time, public
recognition, wide popularity, etc., the trademark cannot be refused by the registrar.

Proviso to S.9(1) says: 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.

Thus, it can be deduced that S.9(1)(b) talking about geographical origin is a rule and proviso
to Sub Section (1) is its exception.

DISTINCTIVE CHARACTER

The marks of geographical origin can’t be used in a trade mark by any proprietor unless there
is clear distinctiveness in the mark.

This requirement entails that a trademark should be of a distinctive character. While

determining that a mark is distinctive or not, it has to be seen that the mark does not have a
direct and close reference to the character and quality of applicant’s goods.

The term “distinctive” was defined by The term “distinctive” was defined by Lord
Halsbury as the word ‘distinctive’ means distinguishing a particular person’s goods from
somebody else’s goods-not a quality attributed to the particular article but distinctive in that
respect that it means it is a manufacture of his as distinguished from somebody else. The
manufacturer may or may not be new, but that is the sort of distinction contemplated by the
Statute

Thus, S.9 doesn’t put a blanket ban on the use of the geographical origin, there is only a partial
ban by sub section (b). Same has been reiterated in many judicial cases-

 Geepee Ceval Proteins And ... vs Saroj Oil Industry on 29 May, 2003
In this case, the petitioners used the trade mark ‘CHAMABAL’ and were engaged in
the business of selling edible oil. The defendants were using the trade mark
‘CHAMBAL DEEP’. The petitioners applied for an interim injunction against the
defendants restraining the defendants from manufacturing selling, offering for sale or
advertising directly or indirectly in dealing in edible oil under the trade mark
"CHAMBAL". The defendants opposing the application put four points before the
court-
(i) Petitioners were using a geographical name
(ii) The court had no jurisdiction to try the present suit,
(iii) The trade mark used by the defendant was CHAMBAL DEEP, which is
sufficient to distinguish it with the trade mark of the plaintiff
(iv) That the defendant was prior user of the trade mark since 1980.

Petitoners were successful in proving that they have been investing a big part of their
income in print and electronic media, also since their origin they have a big part of their
income in advertisement. Also, they have earned market goodwill through this
trademark, and they have a good market hold by this mark.

The court held that the word 'Chambal' is a geographical name and
a geographical name can be registered as a trade mark if its distinctiveness is proved.
Therefore, Section 9 of the Act does not put a blanket ban on the registration of
a geographical name as a trademark. Moreover, the present case is based on passing
off the goods of the defendant as that of the plaintiff's goods, therefore, Section 27 of
the Act would save the action of the plaintiff.

 Bharat Tiles And Marble Private Limited v/s Bharat Tiles Manufacturing
Company First Appeal 125 Of 1974( decided on 18th Feb, 1977)
 There was a firm carrying on business under the name and style of Bharat Flooring
Tiles Company which was manufacturing and selling tiles under the trade name Bharat
Tiles. The said firm. it is claimed by the plaintiff Company, had a large-scale business
and in the course of time its goods acquired a name in the trade. Somewhere in June
1940 the said firm entered into an agreement with the plaintiff Company whereby it
was agreed by and between the parties that the firm would sell and the Company would
purchase the lands. buildings furniture fixtures stock in trade of the business. together
with the goodwill and all the trademarks connected therewith. The petitioners through
one of their licencees got to know that the respondent firm which was doing the business
under the name and style of Bharat Tiles Manufacturing Company was passing off their
goods so as to confuse or deceive the public. The petitoners sought for permanent
injunction in the court. The respondents contended that they were using the trade mark
‘B.T.C.’ i.e. Bharat Tiles Company and that there was no likelihood of confusion in the
eyes of public.
The court held that the petitioners have a distinctive character and had been using the
same name since decades and had a good will and trademarks in the same name. The
contention on part of defendants that such trademark is based on a ground of
geographical origin can’t be entertained by the court and the current case rests on the
principle of res ipsa loquitor. Court held in the favour of petitioners and granted
injunction against the respondents.
 Hindustan Radiators Co. vs Hindustan Radiators Ltd. on 11 February, 1987
Same has been reiterated in this case where it has been held that mere geographical
descriptive name is adopted by the petitioner is not always a defence in passing off
action against the respondent and an injunction was granted to respondents for the
manufacturing of radiators in the similar trade name and trademark.