Summary
This post examines recent Indian High Court decisions that have influenced trademark law, particularly regarding distinctiveness and the examination process. The Delhi High Court confirmed the distinctiveness of the mark "What Do You See?" and protected the Miracles trademark under class 44 for its acquired distinctiveness. The Bombay High Court set aside a refusal due to inadequate examination, underscoring the need for reasoned decisions. These judgments illustrate the courts' commitment to a rigorous and fair trademark registration process. Collectively, the cases reinforce judicial standards and help shape a robust intellectual property framework in India.
Delving deeper into the nuances of trademark law, “Trademarks in the Courtroom: Noteworthy Decisions from India, Part-6” presents a fresh compilation of judgments where the courts took a stand on the distinctiveness and proper examination of trademarks. This segment emphasizes the courts’ role in meticulous adjudication, shaping the legal landscape for trademark protection.
“What Do You See?” is not devoid of distinctive character, says Delhi High Court.
In a recent decision, the Delhi High Court set aside an order of the Registrar of Trademarks with respect to the trademark – “What Do you See?”. The Court stated that the mark is distinctive, and is not descriptive for goods/services in classes 16, 25, 26, 41, and 45. It pointed out that tag lines and slogans are protectable as trademarks, and that they must be treated as such.
Citation: A Dot Limited Vs. Registrar Of Trade Marks [C.A.(COMM.IPD-TM) 25/2021]
Delhi High Court finds Miracles trademark not descriptive for medical, beauty, and other services
The Delhi High Court has recently set aside the order of refusal for the trademark, Miracles, filed under class 44, which covers medical, hygiene, beauty, and agricultural services. The Court determined that the mark was not descriptive and that it had acquired distinctiveness. It also pointed out that earlier marks were not similar to the mark in question.
Citation: M/S Arvind Medicare Pvt. Ltd. vs The Registrar Of Trade Marks, Delhi [C.A. (COMM.IPD- TM) 112/2021]
Another trademark refusal set aside due to non-application of mind.
The Bombay High Court has set aside another trademark refusal as there was no application of mind by the examiner. The examiner’s order stated that the mark in question is similar to earlier marks and that registering it is likely to cause confusion but did not consider the following:
a. Abandonment of an earlier mark;
b. Opposition of an earlier mark;
c. Co-existence agreement and NOC from one of the earlier mark’s proprietors; and
d. Registration in several other countries.
As the order did not include any reasoning regarding the aforestated, the Court set aside the order and remanded the case for reconsideration.
Citation: Henkel Ag And Co. Kgaa Vs. The Registrar Of Trademarks [COMM MISCELLANEOUS PETITION (L) NO.34884 OF 2022]
In wrapping up the sixth installment of this insightful series, it’s evident that the Indian courts continue to champion the integrity of the trademark registration process. Their judicious approach reinforces the vitality of unique trademarks and meticulous scrutiny, shaping a robust intellectual property regime.