Khadi and Village Industries Commission v. The Registrar of Trade Marks

Case Title:Khadi and Village Industries Commission v. The Registrar of Trade Marks

Date of Order:January 29, 2025

Case Number:COMMERCIAL MISCELLANEOUS PETITION (LODGING) NO. 31636 OF 2023

Neutral Citation:2025:BHC-OS:1308

Court Name:High Court of Judicature at Bombay

Judge:Justice Manish Pitale, H.J.

Facts of the Case:

Khadi and Village Industries Commission (KVIC), a statutory body under the Ministry of MSME, has been using the trademark "KHADI" for various products.

KVIC launched "Vedic Paint", an anti-fungal and anti-bacterial paint made from cow dung, in December 2020 and later rebranded it as "Khadi Prakritik Paint" in January 2021.

KVIC applied for trademark registration of its device mark in Class 2 (paints, varnishes, etc.) on March 4, 2021.

The Registrar of Trade Marks refused the registration on August 17, 2023, under Section 9(1)(b) of the Trade Marks Act, 1999, stating that the mark consisted of words that described the nature and purpose of the product.

KVIC challenged this refusal in the Bombay High Court.

Issues Raised:

1. Whether the Registrar was justified in refusing registration under Section 9(1)(b) of the Trade Marks Act, 1999?

2. Whether a composite device mark should be assessed as a whole rather than breaking it into individual words?

3. Whether KVIC’s prior use and recognition of "KHADI" should influence the trademark registration?

Reasoning & Analysis by the Court:

Device Mark Must Be Considered as a Whole: The court ruled that a device mark should be assessed in its entirety, rather than evaluating individual words within it.

Misinterpretation of Section 9(1)(b): The court found that the Registrar wrongly applied Section 9(1)(b), which applies only when a mark exclusively describes a product. Since KVIC’s mark had a distinct logo, stylization, and branding, it did not fall under this category.

Established Trademark Rights: KVIC had already secured registration for "KHADI PRAKRITIK PAINT", and similar registrations were granted in the past, making this refusal inconsistent.

Recognition of KHADI as a Well-Known Trademark: The Delhi High Court had previously declared "KHADI" as a well-known trademark, strengthening KVIC’s case.

Failure to Consider Prior Rulings: The Registrar ignored Delhi High Court’s order in KVIC v. JBMR Enterprises (2021) and a World Intellectual Property Organization (WIPO) ruling (2022), both favoring KVIC.

Decision of the Judge:

The Bombay High Court set aside the Registrar’s order and directed that KVIC’s application for trademark registration be allowed to proceed.

The court ruled that the Registrar’s reasoning was flawed, and KVIC’s device mark should be registered.

The Registrar was instructed to take further steps toward registration, including advertisement and formal approval.