Muneer Ahmed Vs Registrar of Trademarks

Analyzing Distinctiveness in Trademarks

Introduction:

The legal landscape surrounding trademark registration often involves nuanced considerations of distinctiveness. This article delves into a recent case where an appeal was filed against the rejection of a trademark application for "BHARAT with device of Brush" in relation to painting brushes, artistic brushes, and roller brushes. The Registrar of Trademarks had rejected the application on the grounds of the mark being highly descriptive and indicative of the intended purpose of the specified goods. The High Court of Delhi, in its decision, examined the distinction between a trademark inherently lacking in distinctiveness and a trademark lacking in distinctiveness.

I. Background of the Case:

The appellant's trademark application was rejected by the Registrar on the basis that the mark, comprising the word "BHARAT" with a distinctive brush device, was highly descriptive and may serve to designate the quality of the applied specification. The Registrar contended that the inclusion of a brush in the trademark indicated the intended purpose of the specified goods, making it non-registrable.

II. Inherently Lacking in Distinctiveness:

The Hon'ble High Court of Delhi noted that there are marks that are inherently lacking in distinctiveness, rendering them incapable of distinguishing the goods or services to which they relate. This category may include commonly used words that inherently lack distinctive character, such as "and," "the," or "it." These marks are incapable of functioning as source identifiers from the outset.

III. Lacking in Distinctiveness:

In contrast, the court identified another category of marks that are "lacking in distinctiveness." These marks are commonly found or used in connection with goods or services, making them incapable of serving as source identifiers. For a mark to fall into this category, there must be specific reference in the Registrar's order identifying the mark as being "common to the trade."

IV. Analysis of BHARAT with Device of Brush:

The High Court analyzed the trademark "BHARAT with device of Brush" as a whole, emphasizing that it is a device trademark and must be considered in its entirety. The court rejected the notion that the mark was descriptive merely because it included a paint brush. The distinctive style of the word "BHARAT," combined with the unique elements of the brush device, was deemed to be distinctive and not lacking in distinctiveness.

V. Conclusion and Remand:

Concluding that the trademark, seen as a whole, was clearly distinctive, the court set aside the impugned order of the Registrar. The matter was remanded to the Senior Examiner of Trademarks for further examination, recognizing the distinctive character of the mark and its potential eligibility for registration.

In essence, this case underscores the importance of considering trademarks as integral wholes, particularly when they involve distinctive elements that contribute to their overall distinctiveness. The analysis also highlights the critical distinction between marks that are inherently lacking in distinctiveness and those lacking distinctiveness due to common usage in the trade.

The Case Law Discussed:

Date of Judgement/Order:17/11/2023

Case No. C.A.(COMM.IPD-TM) 20/2023

Neutral Citation No:2023:DHC:8404

Name of Hon'ble Court: Delhi High Court

Name of Hon'ble Judge: C Hari Shankar, HJ

Case Title: Muneer Ahmed Vs Registrar of Trademarks

Disclaimer:

Information and discussion contained herein is being shared in the public Interest. The same should not be treated as substitute for expert advice as it is subject to my subjectivity and may contain human errors in perception, interpretation and presentation of the fact and issue involved herein.

Written By: Advocate Ajay Amitabh Suman,

IP Adjutor - Patent and Trademark Attorney

Email: ajayamitabhsuman@gmail.com,

Mob No: 9990389539

Emerald Enterprises Vs Emerald Valves Private Limited

Ex Parte Injunctions in Passing Off Cases:

Introduction:

In a recent legal development, the Hon'ble High Court of Delhi addressed the pivotal question of granting an ex parte injunction in an action for passing off, specifically focusing on the common law rights associated with the trademark EMERALD. The case involved both the Plaintiff and the Defendant being registered proprietors of the trademark EMERALD, leading the Hon'ble Single Judge to assess the relief of passing off against the Defendant.

Facts of the Case:

The Plaintiff, a prominent manufacturer of various products, claimed extensive use of the EMERALD trademark since 1990, particularly in the manufacturing of valves, hot water generators, expansion tanks, humidifiers, vacuum degassers, and cooling tower filtration systems. On the other hand, the Defendant, incorporated on June 24, 2022, specialized in manufacturing and selling valves such as butterfly valves, globe valves, and check valves. The Defendant applied for the mark 'EMERALD' on July 7, 2022 as proposed to be used basis, for which with registration was granted.

Legal Analysis:

Despite both parties being registered proprietors of the EMERALD trademark, the Court emphasized the settled legal position that the prior user of the mark is entitled to protection, irrespective of recent registrations held by competitors. The recent registration of the Defendant did not diminish the likelihood of an injunction being granted. The Hon'ble Single Judge established a prima facie case in favor of the Plaintiff based on the following grounds:

i. Identity of Trademark and Trade Name:

The Court noted that the impugned trademark and trade name of the Defendant were identical to those of the Plaintiff.

ii.Identity of Goods and Customers:

The goods offered by both parties were identical, and the customer class served was the same.

iii.Long Prior Use:

The Plaintiff's extensive prior use of the EMERALD mark for valves, dating back to 1990, weighed significantly in their favor.

iv.Arbitrary Nature of the Mark:

The Court highlighted that the EMERALD mark was entirely arbitrary, and the Defendant's recent adoption was not bona fide.

Precedent from Supreme Court:

The decision drew upon the dictum laid down by the Hon'ble Supreme Court of India in Laxmikant V. Patel v. Chetanbhai Shah (MANU/SC/0763/2001). The Supreme Court emphasized that in cases where passing off is established, an immediate ex-parte injunction should be granted. Additionally, the Supreme Court recommended the appointment of Local Commissioners to ensure that infringing products are not permitted to be sold.

The Concluding Note:

This decision by the Hon'ble High Court of Delhi sets a noteworthy precedent, affirming that even in passing off actions, the Court should grant an ex parte injunction when a prima facie case exists in favor of the Plaintiff. This underscores the importance of protecting the rights of the prior user and ensuring that potential action of passing off action is promptly addressed, aligning with the principles laid down by the Supreme Court.

The Case Law Discussed:

Date of Judgement/Order:21/11/2023

Case No. CS(COMM)817/2023

Neutral Citation No:NA

Name of Hon'ble Court: Delhi High Court

Name of Hon'ble Judge: Prathiba M Singh, HJ

Case Title: Emerald Enterprises Vs Emerald Valves Private Limited

Disclaimer:

Information and discussion contained herein is being shared in the public Interest. The same should not be treated as substitute for expert advice as it is subject to my subjectivity and may contain human errors in perception, interpretation and presentation of the fact and issue involved herein.

Written By: Advocate Ajay Amitabh Suman,

IP Adjutor - Patent and Trademark Attorney

Email: ajayamitabhsuman@gmail.com,

Mob No: 9990389539

Scrum Alliance Inc Vs Mr. Prem Kumar and Ors

Significance of Registered Certification Trademarks

Introduction:

Certification trademarks (CTMs) hold a special place in intellectual property law as they signify that the goods or services meet specific standards set by the certifying authority. This article analyzes a legal case involving a prominent Scrum certification organization ("the Plaintiff") and a defendant accused of infringing on the Plaintiff's registered certification trademark.

Background:

The Plaintiff claimed to be the leading Scrum certification organization, having certified a significant number of practitioners globally, with a substantial presence in India. The core of the dispute revolved around the Plaintiff's registered certification trademark, which included the CSM (Certified ScrumMaster) and CSM Logo in a Sun Motif. The Defendant, while holding a registration for the trademark CSM since 2012, had not obtained certification status for the mark.

Legal Framework:

The case hinged on Section 75 of the law, which defines infringement of CTMs. According to this section, infringement occurs when an unauthorized party uses an identical or deceptively similar mark in the course of trade, in connection with goods or services covered by the registered CTM. In this context, the court examined whether the Defendant's adoption of the CSM Logo in a Sun Motif constituted an infringement of the Plaintiff's registered certification trademark.

Court's Analysis:

The Hon'ble High Court of Delhi carefully scrutinized the facts of the case and applied the legal provisions governing CTMs. The Plaintiff's claims were based not only on their certification activities but also on the registered certification trademark. "The court observed that the Defendant could not provide a satisfactory explanation for adopting the "sun" motif, leading to the inference that the idea was borrowed from the Plaintiff's registered trademark."

Infringement and Borrowed Sun Motif:

The court's decision to grant an interim injunction pertaining to relief of infringement against the Defendant was grounded in the finding that the Defendant's use of a similar "sun" motif in connection with the CSM Logo amounted to infringement. The absence of a credible explanation from the Defendant strengthened the court's position that the motif had been borrowed from the Plaintiff's registered certification trademark. This highlights the importance of protecting not only the literal elements of a trademark but also its conceptual aspects, such as motifs and designs.

Relief of Passing Off:

While the court granted an interim injunction on the infringement claim, it declined to provide relief on the passing off aspect. This decision underscores the court's specific focus on the registered certification trademark and its role in preventing unauthorized use by adopting a similar or identical mark.

The Concluding Note:

"The case underscores the significance attached to registered certification trademarks in protecting the rights of certifying organizations." The court's analysis of infringement, coupled with the consideration of borrowed motifs, sets a precedent for upholding the distinctiveness and integrity of certification trademarks.

The Case Law Discussed:

Date of Judgement/Order:21/11/2023

Case No. CS Comm 700 of 2021

Neutral Citation No: 2023:DHC:8346

Name of Hon'ble Court: Delhi High Court

Name of Hon'ble Judge C Harishankar, HJ

Case Title: Scrum Alliance Inc Vs Mr. Prem Kumar and Ors

Disclaimer:

Information and discussion contained herein is being shared in the public Interest. The same should not be treated as substitute for expert advice as it is subject to my subjectivity and may contain human errors in perception, interpretation and presentation of the fact and issue involved herein.

Written By: Advocate Ajay Amitabh Suman,

IP Adjutor - Patent and Trademark Attorney

Email: ajayamitabhsuman@gmail.com,

Mob No: 9990389539