Applications for leave to cross-examine a witness in rectification proceedings dismissed. The Court held that Rule 7(viii) of the Delhi High Court Intellectual Property Rights Division Rules 2022 permits cross-examination only in exceptional circumstances and on recorded reasons, and that where a specific rule governs the question, recourse to the general provisions of the Code of Civil Procedure, including Order XIX Rule 2, is unwarranted and impermissible. On the facts, the challenge was laid under section 9(1)(a) on the ground that the mark lacked distinctive character, so the use of the mark was not the subject matter of the petition and an application to cross-examine on user was misconceived.
Appeal allowed and an injunction granted against use of a mark sharing the appellant's dominant textual element. Following the Supreme Court in the AMBAL and ANDAL case, the Division Bench held that where the main feature of rival composite marks is phonetically similar and likely to confuse the average consumer, visual dissimilarity between the whole logos does not mitigate infringement. It added that a word mark registration entitles the proprietor to injunct not only a deceptively similar word mark but also any device mark whose prominent feature is textual, where that text infringes. Once a prima facie case of infringement is made out, an injunction must follow under Midas Hygiene.
Refusal of a mark as descriptive set aside. The Court held that the reasoning was imaginary and based on conjecture: the order never clarified which products consumers were supposed to be choosing between, and there was no factual material to support the conclusion that the mark denoted a variety of goods. Decisively, the application was filed on a proposed-to-be-used basis, so there was no prior use from which any conclusion about consumer options could be drawn, and the order was silent on that aspect.
A composite mark was refused on its word element alone. The application covered a device and a tag line as well, and the order gave no reason at all why the composite as a whole was non-distinctive or descriptive. Marks sharing the same descriptive word had been registered for the same services, which the Court said raised a doubt about why this applicant alone had been refused.
A slogan was refused as devoid of distinctive character and inherently incapable of distinguishing one person's goods from another's. The words were too common to be monopolised, none of the appellant's many registrations was for a similar mark, and the application was on a proposed-to-be-used basis with no prior use.
Refusal of the mark PLANET E SCHOOL set aside and the Registry directed to process the application. Applying the anti-dissection rule as explained in South India Beverages, the Court held that composite marks must be compared as wholes and that it is impermissible to find deceptive similarity by comparing one portion of a mark with a portion of another where the composites viewed as wholes are dissimilar. Examining the component parts is a legitimate preliminary step, but deciding likelihood of confusion solely on a prominent feature while ignoring the rest violates the rule. The appellant offered to limit its claim, and the Court accepted that limitation.
Common English words can be registered when the mark is read in its totality, and the Registrar cannot dissect it the way he attempted. Even an unusual juxtaposition of words in common use may qualify as distinctive, and distinctiveness is judged against the particular services rather than in a vacuum, so long as the applicant claims no monopoly in the separate words.
Notice was given under section 9(1)(a) and the applicant was heard on it across three successive hearings, and the refusal then came under section 9(1)(b). The two sub-clauses are not overlapping provisions but have their own distinctive areas of operation, so an order under one where the applicant was heard only on the other is a gross violation of natural justice.
The same tag line had been registered in Hindi and in vernacular transliterations. Refusing it in English alone for want of distinctiveness was plainly arbitrary. It is not the language that matters but the content, and the tag line was claimed with the mark, not in exclusion of it.
A label was refused over a registered word mark consisting of the common word alone. That word by itself throws no distinctiveness and would not qualify for registration, while the device made the applicant's label reasonably distinctive, and the Registry had no case that any other label carried a similar device. The approach taken was short-sighted.
Refusal of a word mark for travel and tourism services under sections 9(1)(a) and 9(1)(b) set aside. On section 9(1)(a), lack of distinctive character means the mark is not such as would enable the applicant's goods or services to be distinguished from another's, and there was no evidence to that effect: the Examiner referred to no other proprietor holding a registration for the expression or anything similar, and the phrase was not so commonplace as to be inherently lacking in distinctiveness. On section 9(1)(b), there is a difference between descriptive marks, which the provision proscribes, and suggestive marks, which are entitled to registration; the mark could not be treated as descriptive of travel services merely because those services might involve travel to various places. Section 9(1)(b) cannot be used to refuse any word mark which has some relationship, howsoever distant, with the goods or services applied for. The Court also criticised the practice, sanctioned by Rule 36(1), of passing an unreasoned refusal and then requiring the applicant to apply and pay for the grounds of decision, calling it an unwholesome practice.
A word mark was refused as a common geographical name. The mark is to be considered as a whole and not split into its constituents, and taken as a whole it was not descriptive of the printed publications applied for. The Manual does not say that geographical names cannot be registered: the guidance is only that they cannot be registered where they describe the goods or services applied for.
Refusal under sections 9(1)(a), 9(1)(b), 11(1)(a) and 11(1)(b) set aside. The Statement of Grounds gave no reason why the word mark was not distinctive or was descriptive, and nearly a decade of use with documents on record showed acquired distinctiveness. Appeal allowed and the application sent to advertisement under the proviso to section 20.
A composite device was refused as a combination of non-distinctive words commonly in use. Taken as a whole it had three elements: a set of atypical letters with no meaning of their own, a descriptive phrase over which no exclusivity was claimed, and the applicant's own trading name, already registered in several forms. The mark could not be dissected so as to deny registration.
Two dictionary words used together did not directly describe a positive quality of the services and only hinted at their intended nature, so the mark was suggestive at the highest even though it had the potential of being commendatory. A user affidavit showed use in India since 2013, identical registrations existed in several jurisdictions, and half of the ten cited marks were the applicant's own.
A tagline made of dictionary words can function as a source identifier so long as the expression does not describe or relate to the features of the goods and services. A question used to elicit someone's perception of a situation designates nothing about the goods in the classes applied for, and the examiner appeared to have relied solely on the dictionary meanings of the words.
The companion appeal. There were hardly any differences between the refused device mark and the applicant's own registered formative marks, which carried the same logo and the same distinctive word, and both of those are prominent features of the mark refused. The objection that it lacked distinctiveness could not stand.
A device mark was refused for want of distinctiveness. The applicant and its sister concern already held registrations for similar marks in the same three classes, and the Registry had registered a mark differing from this one only by the inclusion of the names of four cities. The sister concern had given its no-objection.
Refusal under sections 9(1)(a), 9(1)(b) and 11(1)(a) set aside. The combined term was not a dictionary word but a joining of two distinct words which, taken together, suggested a brand relating to the care of colours and so was suggestive at best for cosmetics, and it was written in a stylised manner that set it apart. Continuous use since 2013 gave some basis for a claim of acquired distinctiveness. The relative grounds objection fell away because the applicant removed from the mark the element it shared with the cited marks.
A three-digit numeral was refused as descriptive and for want of a user affidavit. The statutory definition of a mark expressly includes a numeral, and a numeral can be excluded only if it designates a characteristic of the goods, which these three digits did not for a liquid gasket maker. The user affidavit requirement came from the 2017 Rules and could not be applied to an application filed in 2012.
Refusal under section 9(1)(a) and (b) of a composite mark set aside. The artwork, a water droplet covered by a leaf in the shape of a hand, was unique, creative and clearly distinctive. A mark must be seen as a whole, and the slogan and acronym within it, though prominent, are only part of it. The Registry produced no material to show the expression was common to the trade or descriptive of any feature of water treatment products, and slogans and taglines can be trade marks within sections 2(m) and 2(zb).
Allowed. A composite label mark comprising a wave or splash of milk with the words "JUST" and "MILK" was held capable of distinguishing. The use of "JUST" in relation to milk is plainly arbitrary, and in conjunction with "MILK" the mark becomes suggestive rather than descriptive. The appellant's existing registrations for the word "JUST" for milk and milk products supported the conclusion, and the objection under section 9 did not sustain.
ALPS applied to electrical goods is arbitrary, not descriptive, and the Registry's own practice accepts mountain names for goods unconnected with the geography. Two cited marks were abandoned and the third dissimilar. The refusal also rested on a user affidavit required only by rules made after the application was filed.
