Akhil Chandra Vs Registrar of Trademark

Judgement Date:26.08.2022
Case No. CA (Comm.IPD-TM) 115 of 2021
Hon'ble High Court of Delhi
Navin Chawla, H.J.
Akhil Chandra Vs Registrar of Trademark

What could be fate of those trademarks which are comprised of ordinary words? Order in other words , can a Trademark, which are result of combining ordinary dictionary words, be appropriated exclusively by the proprietor?

The Hon'ble High Court of Delhi was having an occasion to deal with such situation vide passing Judgement dated 26.08.2022 in Intellectual Property Division Trademark Appeal bearing No. CA (Comm.IPD-TM) 115 of 2021 titled as Akhil Chandra Vs Registrar of Trademark.

The Appellant was the applicant , who has approached the Hon'ble High Court of Delhi against order of Registrar of Trademark, where by Trademark application filed by the Applicant was refused under the Provisions of Section 9 and Section 11 of the Trademarks Act 1999.

In order to appreciate the order passed by Ld. Registrar of Trademarks after raising an objection under Section 9 and Section 11 of the Trademarks Act 1999, these provisions are reproduced as under:

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;

(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;

(c) which consist exclusively of marks or indications which have become customary in the current language or in the bona fide and established practices of the trade, 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.

From bare perusal of Section 9 of the Trademarks Act 1999, it is apparent that this provision deals with the situation where a trademark may be refused on the grounds of inter alia lacking distinctiveness. This is absolute ground for refusal of the Trademark.

For the purpose of present case it is relevant to point out that the subject matter Trademark was refused on the ground of lacking distinctiveness under the provision of Section 9 of Trademarks Act 1999.

While Section 11 of the Trademarks Act 1999 provides as under:

11. Relative grounds for refusal of registration.

(1) Save as provided in section 12, a trade mark shall not be registered if, because of;

(a) its identity with an earlier trade mark and similarity of goods or services covered by the trade mark; or

(b) its similarity to an earlier trade mark and the identity or similarity of the goods or services covered by the trade mark, there exists a likelihood of confusion on the part of the public, which includes the likelihood of association with the earlier trade mark.

From bare perusal of Section 11 of Trademarks Act 1999, it is apparent that this provides relative grounds for refusal. A Trademark may be refused on the grounds of similarity of presence of earlier applied for or earliest registered Trademarks on register.

Now coming to the Facts of the case, the Appellant was the applicant of Trademark STUDIO MOSAIC. The Registrar of Trademarks refused the said Trademark application of the Appellant on the following grounds:

“9(1 )(a) - The trade mark is 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:

11(1)(a) - Relative grounds for refusal of registration.- The said trade Mark is refused for registration because of its identity with an earlier trade mark and similarity of goods or services.

When the matter was listed before the Hon'ble High Court of Delhi, the Appellant assailed the impugned order by submitting that the mark in question was a combination of two common dictionary words. The mark having combination of two ordinary dictionary word, having no connection with the goods in question, is capable of being registered under the provisions of Trademarks Act 1999.

The Hon'ble High Court of Delhi was pleased to reject the objection under Section 9 of Trademarks Act 1999 raised by Registrar of Trademarks by observing that the words ‘STUDIO’ and ‘MOSAIC’, though common dictionary words, when joined together become arbitrary for the goods in question and do not have any connection with the goods in question. Thus the subject matter Trademark STUDIO MOSAIC was held to qualify to proceed for advertisement in Trade Mark Journal.

The other objection raised by the Registrar of Trademark under Section 11 , vis a vis similarity of subject matter Trademark applied for with respect to other prior cited trademark namely STUDIO DEPOT, MOSAIC (LABEL), STUDIO 127 (LABEL), STUDIO PROFILE, STUDIO (LABEL), MOSAICA EDUCATION (DEVICE) was also held to be not tenable on the ground cited marks cannot prima facie be said to be deceptively similar to that of the appellant, specifically keeping in view the goods and services for which the appellant was seeking registration of the mark and for which these marks are registered. The ground of deceptive similarity of the subject matter Trademark applied for was also rejected.

Thus from bare perusal of the afore mentioned Judgment it is apparent that Trademark, which is combination of two common dictionary word, having no connection with the goods in relation to which it is applied for, can not be rejected at the pre advertisement stage. The Trademark having combination of two ordinary words can qualify as strong arbitrary trademark in case the applicant shows that it has no connection with the goods , applied for.

Ajay Amitabh Suman, IPR Advocate, Hon'ble High Court of Delhi.
ajayamitabh7@gmail.com, 9990389539