Learn the key differences between registrable vs non registrable trademarks in India. A complete trademark guide for businesses, startups & legal professionals.
In the dynamic world of branding and business identity, trademark registration plays a vital role. In India, the Trade Marks Act, 1999 governs the laws related to trademarks. However, not all marks are eligible for registration. Some fall under the category of registrable trademarks, while others are deemed non-registrable.
Understanding this distinction is essential for businesses, startups, and legal professionals. In this blog, we’ll break down the difference between registrable and non-registrable trademarks, the legal framework in India, and practical tips to ensure your brand name gets the protection it deserves.
✅ What is a Trademark?
A trademark is a distinctive sign or symbol used by a business to identify its products or services and distinguish them from others. It can include:
- Words
- Names
- Logos
- Slogans
- Colours
- Shapes
- Sounds
Once registered, a trademark grants the owner exclusive rights and legal remedies against infringement.
🔍 Legal Framework: The Trade Marks Act, 1999
Under the Trade Marks Act, 1999, any mark that meets the statutory requirements can be registered with the Registrar of Trademarks under the Controller General of Patents, Designs & Trade Marks (CGPDTM).
Key Sections:
- Section 9: Absolute grounds for refusal of registration
- Section 11: Relative grounds for refusal
- Section 18: Application for registration
- Section 23: Registration of trademark
Registrable vs Non Registrable Trademarks in India
✅ What are Registrable Trademarks?
Registrable trademarks are those that meet the criteria laid down under the Trade Marks Act, 1999, and do not fall under any ground of refusal.
✅ Criteria for a Registrable Trademark:
- Distinctiveness – The mark must be capable of distinguishing the goods/services of one party from another.
- Not Deceptive or Scandalous – It should not mislead the public or contain obscene/scandalous content.
- Not Identical or Similar – It must not be identical or deceptively similar to an already registered mark.
- Not Prohibited by Law – The use of the mark should not be prohibited under any law.
✅ Examples:
- Invented Words – “Zomato”, “Pepsi”
- Suggestive Marks – “Netflix” for an entertainment service
- Arbitrary Marks – “Apple” for computers
These types of trademarks usually qualify for registration and offer strong legal protection.
❌ What are Non-Registrable Trademarks?
Non-registrable trademarks are marks that do not qualify under the legal criteria and are rejected by the Trademark Registry.
❌ Absolute Grounds for Refusal (Section 9):
- Lack of distinctiveness – Common words like “Milk” for dairy products
- Descriptive words – “Cold” for beverages
- Generic terms – “Soap” for soaps
- Offensive or obscene content
- Marks likely to deceive the public
❌ Relative Grounds for Refusal (Section 11):
- If the mark is identical or deceptively similar to an already registered mark, especially for the same or similar goods/services.
❌ Other Prohibited Marks:
- Names or emblems protected under the Emblems and Names (Prevention of Improper Use) Act, 1950
- Marks resembling national symbols, government insignia, or flags
⚖️ Case Law: Important Judicial Precedents
📌 ITC Limited v. Nestle India Limited (2020)
Held that descriptive words cannot be registered unless they have acquired secondary meaning through extensive use.
📌 Nandhini Deluxe v. Karnataka Co-operative Milk Producers Federation Ltd. (2018)
SC ruled that even similar trademarks can coexist if the goods/services are unrelated, reinforcing relative grounds for refusal under Section 11.
📄 How to Ensure Your Trademark is Registrable
- Conduct a Trademark Search – Check for existing marks using the IP India Trademark Search Tool.
- Choose a Unique & Distinctive Mark – Invented words, acronyms, or suggestive combinations work best.
- Avoid Descriptive and Generic Terms – These are difficult to register and easy to infringe.
- Consult a Trademark Attorney – A legal expert can help assess registrability and avoid costly mistakes.
- Document Use – For marks that are descriptive but used extensively, evidence of use may support registration under secondary meaning.
📝 Registration Process at a Glance
- Trademark Search
- Filing Application (TM-A)
- Examination Report
- Reply to Objections (if any)
- Publication in Journal
- Opposition (if any)
- Registration Certificate
🛡️ Why Trademark Registration Matters
- Legal Protection – Protects against misuse and infringement
- Brand Value – Builds credibility and recognition
- Exclusive Rights – Nationwide monopoly over the mark
- Asset Creation – Trademarks can be sold, franchised, or licensed
🔎 FAQs
Q1. Can I register a common English word as a trademark?
Only if it is used in an arbitrary or distinctive manner. For example, “Apple” for electronics.
Q2. What happens if my trademark application is rejected?
You can file a reply to examination report, and even appeal before the Intellectual Property Appellate Board (IPAB) or High Court.
Q3. Is trademark registration in India valid internationally?
No. You need to file separate applications or use the Madrid Protocol for international registration.
📌 Conclusion
Understanding the difference between registrable and non-registrable trademarks is crucial for any business operating in India. While the registrability of a trademark depends on several factors including distinctiveness, legality, and prior existence, proper legal guidance and proactive strategy can greatly improve your chances of success.
Whether you’re a startup launching a new brand or an established enterprise expanding your IP portfolio, trademark registration is not just a formality- it’s a necessity.
📞 Have Questions or Need Help?
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This content is for general informational purposes only and does not constitute legal advice.