Brief Facts
The case involved an appeal by Abu Dhabi Global Market (ADGM) against the order of the Assistant Registrar of Trademarks rejecting its trademark application. The trademark application, filed under No. 3184380, sought registration of a device mark. The Assistant Registrar refused the application on the grounds that the mark lacked distinctiveness, was neither coined nor invented, and that Abu Dhabi being a geographical name could not be monopolized. The order also cited the applicant’s failure to submit an affidavit of use.
Issues
The primary issue was whether the rejection of the trademark application was legally sustainable under Section 9 of the Trademarks Act, 1999. The court also examined whether a composite mark containing a geographical name could be granted protection and whether distinctiveness could be established without an affidavit of use.
Submissions of Parties
The appellant argued that the mark had acquired distinctiveness and had been recognized under Federal Decree No. 15/2013 of the UAE, which established Abu Dhabi Global Market as a financial free zone. The appellant contended that the mark was already in use and that a composite mark containing a geographical name was eligible for registration. The respondent countered that Abu Dhabi was a geographical indicator and could not be monopolized. It also argued that the mark lacked inherent distinctiveness and that the appellant had failed to establish distinctiveness through evidence of use.
Reasoning and Analysis of Judge
The court held that the Assistant Registrar had erred in rejecting the mark on the grounds that it was neither coined nor invented, as distinctiveness, rather than inventiveness, was the criterion for trademark registration. The court found that the mark, when considered in its entirety, was a composite mark and did not fall within the absolute prohibitions of Section 9(1)(b). The court also held that distinctiveness does not necessarily require evidence of use, particularly where a mark is inherently capable of distinguishing goods and services. The Registrar’s failure to consider the Federal Decree establishing ADGM was also deemed a critical omission. The court further observed that procedural fairness was lacking, as the Assistant Registrar had failed to apply its mind to the detailed reply filed by the appellant.
Decision
The court quashed the rejection order and remanded the matter to the Registrar of Trademarks for advertisement and further proceedings. The Registrar was directed to process the application in accordance with law, ensuring due consideration of all relevant factors.
Case Title: Abu Dhabi Global Market vs. Registrar of Trademarks
Date of Order: May 18, 2023
Case No.: C.A.(COMM.IPD-TM) 10/2023
Neutral Citation: 2023:DHC:3476
Name of Court: High Court of Delhi
Name of Judge: Honourable Mr. Justice C. Hari Shankar
