Summary
In a key decision, the Delhi High Court upheld Mocemsa’s appeal against the Trade Marks Registry’s refusal, emphasizing the distinctiveness of stylized device marks. The Court criticized the Registry for inconsistencies and ordered the mark's publication. This case highlights the importance of composite mark assessment and procedural fairness.
Introduction
In a recent decision, the Delhi High Court ruled in favor of M/S. Mocemsa Care (“Mocemsa”) in its appeal against the trademark application refusal by the Trade Marks Registry. The case arose from the Registry’s order dated January 1, 2024, refusing Trademark Application No. 4852344 for the mark , ‘
/OH THAT! NATURAL’ filed under Class 3, citing lack of inherent distinctiveness and insufficient evidence of use.
Background of the case
The Application was filed on 06/02/2021 in class 3 for products such as lip scrub, eye gel, face wash, shampoo, room freshener and linen freshener with use claimed since 20/11/2020. In support of the use claim, a user affidavit dated 18/12/2020 was filed along with invoice dated 20/11/2020. The Trade Marks Registry raised objections under Sections 9(1)(a) and 9(1)(b) in the examination report dated 19/02/2021. Despite replying to the objections and attending a hearing, the Application was refused.
Court’s Findings
The Court disagreed with the Registrar’s reasoning on the following grounds:
- Mocemsa’s mark, although composed of common words, was a device mark presented in a unique and stylized manner, making it distinctive when viewed as a whole.
- Several registrations using common words arranged in stylized manner have been previously granted registration by the Trade Marks Registry.
- Distinctiveness should be assessed in the context of the composite mark as a whole instead of proving its components to be distinctive by itself.
- Regarding the insufficient evidence, it was pointed out that this issue had not been raised in the initial examination report. If such an objection had been taken in the examination report, Mocemsa would have filed other available invoices as evidently filed along with the appeal.
Decision
The Court ruled in favor of M/S. Mocemsa Care, setting aside the trademark application refusal. The Trade Marks Registry was directed to proceed with the advertisement of the Application within three months. If there were any opposition to the Application, it would be decided on its own merits.
Citation: M/S. Mocemsa Care vs The Registrar of Trade Marks, High Court of New Delhi, C.A.(COMM.IPD-TM) 20/2024, pronounced on March 26, 2025, available at: https://indiankanoon.org/doc/5167156/
Article Reviewed by: Naika Salaria
Accessibility Reviewed by: Gaurav Mishra
