Abhinav Immigration Services Pvt. Ltd vs The Registrar Of Trade Marks on 4 January, 2024

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Delhi High Court - Orders

Abhinav Immigration Services Pvt. Ltd vs The Registrar Of Trade Marks on 4 January, 2024

1. The present appeal under Section 91 of the Trademarks Act, 1999 is directed against order dated 22nd September, 2023 [hereinafter, "impugned order"], whereby the Registrar of Trademarks has refused Appellant's trademark application No. 4455124 in class 39 for the mark " " [hereinafter "subject mark"] in respect of services pertaining to arranging travel visas, study visas, visitor visas, student visas, job visas and travel documents for persons traveling abroad; visa and immigration consultancy and advisory services.

2. Relevant portion of the impugned order reads as under:

"The mark applied for registration is objectionable under S 9(1 )(b) C.A.(COMM.IPD-TM) 1/2024 Page 1 of 5 This is a digitally signed order.

The authenticity of the order can be re-verified from Delhi High Court Order Portal by scanning the QR code shown above. The Order is downloaded from the DHC Server on 06/01/2024 at 21:55:25 of the Trade Marks Act 1999, as it consists of which may serve in trade to designate the kind, quality, quantity, intended purpose, values, geographical origin or the time of production of the goods or rendering of the service or other characteristics of the goods or service.

The mark applied for registration is identical with /similar to earlier trademarks on record, as mentioned in the Examination report and by similarity of marks as well as similarity of goods and services covered under such marks, there exists a likelihood of confusion in the mind of public. As such the registration of the mark is objectionable under Section 11 (1) of the Trade Marks Act 1999.

Perused the reply and documents.Heard Adv.Rajat Jain. The applicant submitted that the applied mark is coined, innovative, unique combination and distinctive. It does not designate any characteristics of the applied goods or services. It is dissimilar to the cited marks in question. Therefore prayed for acceptance of the mark. Moreover, The same mark is accepted in the class.35 Vide appl.No.4455123.Therefore prayed for acceptance of the mark. However, The applied mark exclusively indicates the kind, quality, intended purpose, other characteristics, etc., of the applied mark. Though the applied mark is a composite device. It does not affect the basis characteristic of the mark. The applicant has relied upon the following Judgements of the Hon'ble Courts 1. CENTRAL PARK ESTATES PVT. LTD. & ORS VS GODREJ SKYLINE DEVELOPERS PRIVATE LIMITED & ANR.2.ROGER YANG VS REGISTRAR OF TRADE MARKS .3EXCITEL PRIVATE LIMITED VS THE REGISTRAR OF TRADE MARKS.4.ESSENTIAL EXPORT SOCIEDAD ANONIMA VS THE REGISTRAR OF TRADE MARKS.5.M/S SUBROS EDUCATIONAL SOCIETY VS UNION OF INDIA.6.MANKIND PHARMA LIMITED VS THE REGISTRAR OF TRADE MARKS. In all the above citations the facts and circumstances are different from the applied mark. Therefore the benefits of the citations are not extended in favour of the applicant. The applicant failed to provide cogent evidence in support of the user's claim as well as to prove the acquired distinctiveness or secondary meaning by prior use. The applied mark is highly descriptive. The applied mark is similar to the cited mark No.1239069 and the services are the same. It is likely to cause confusion in the minds of consumers. Hence refused.

After perusal of all the documents on record and submission made by the applicant / authorised agent, it is concluded that applied mark is not registrable because of the reason stated as above. Hence application no 4455124 cannot be accepted and refused accordingly."

3. As can be seen from the above extract, the Registrar has found the C.A.(COMM.IPD-TM) 1/2024 Page 2 of 5 This is a digitally signed order.

4. As regards the first objection under Section 9(1)(b) of Trademarks Act, the Registrar considers the subject mark as descriptive of the kind, quality, intended purpose etc. of the goods/ services to which the mark is to be applied. On this aspect, it must first be noted that Appellant's application for registration of an identical mark in class 35 for "overseas recruitment, outsourcing services [business assistance], employment recruitment, employment consultancy, employment counselling, enrolling students in the educational programs of others" has been accepted by the Trademarks Registry, with the caveat that the mark must be used as a whole. The said application is currently opposed by Visa International Service Association, a third-party. Further, the subject mark is a composite mark, comprising of a logo containing the words "VISA EXPERTS", followed with the phrase "PARTNERING LIFE CHANGING DECISIONS". It is not a simpliciter wordmark, but is a stylized device, which is required to be assessed as a whole. Applying this test, in the opinion of the Court, the presence of the phrase "VISA EXPERTS - PARTNERING LIFE CHANGING DECISIONS" would not render the subject mark descriptive of the characteristics of the applied goods/ services, as prohibited under Section 9(1)(b) of the Trademarks Act.

5. Insofar as the objection under Section 11(1) is concerned, one would have to refer to the Examination Report dated 15th June, 2020 [Document No. 3], which cites several conflicting marks. Of these cited marks, it is pointed out that only one mark - trademark No. 1239069 "VISA" - is registered, in the name of Visa International Service Association. The C.A.(COMM.IPD-TM) 1/2024 Page 3 of 5 This is a digitally signed order.

The authenticity of the order can be re-verified from Delhi High Court Order Portal by scanning the QR code shown above. The Order is downloaded from the DHC Server on 06/01/2024 at 21:55:25 remaining applications have either been rejected or abandoned. On this aspect, counsel for Appellant has drawn the Court's attention to communications dated 27th and 29th September, 2023 [Document 7], which depict that Visa International Service Association (proprietor of conflicting trademark No. 1239069) has agreed to Appellant's application proceeding forward in class 39, provided the word "VISA" is disclaimed in the subject mark. While this understanding could not be given effect to as the subject mark was refused registration, these e-mail communications nonetheless indicate that Visa International Service Association does not object to the subject mark being brought on the register, as long as there is a disclaimer of the word "VISA". Counsel for Appellant, on instructions, also submits that Appellant is agreeable to the imposition of restriction over exclusive rights in the word "VISA" contained in the subject mark. This statement is taken on record and shall accordingly bind the Appellant.

6. In light of the above, the objection raised under Section 11(1) of the Trademarks Act also does not survive and the subject mark deserves to be accepted and advertised. Accordingly, the following directions are issued:

(i) Impugned order dated 22nd September, 2023 is set aside.

                                    (ii)        Trademarks Registry is directed to process the registration of



                                    application No. 4455124 in class 39 for "                                              " mark.
                                    (iii)       Subject mark be advertised within a period of three months from
                                    today.
                                    (iv)        If there is any opposition, the same shall be decided on its own merits,
                                    uninfluenced by observations made hereinabove.




                                      C.A.(COMM.IPD-TM) 1/2024                                                                       Page 4 of 5
This is a digitally signed order.

The authenticity of the order can be re-verified from Delhi High Court Order Portal by scanning the QR code shown above. The Order is downloaded from the DHC Server on 06/01/2024 at 21:55:26

(v) It is clarified the subject mark be read as a whole and shall not grant any exclusive rights in any of the words, "VISA EXPERTS -

PARTNERING LIFE CHANGING DECISIONS", separately or individually. This disclaimer shall be reflected in the trademarks journal at the time of advertisement and also if the subject mark ultimately proceeds for registration.

7. Since the instant order is being passed without hearing the proprietor of trademark No. 1239069, they shall be at liberty to raise objections, if so desired, in accordance with law, after the mark is advertised.

8. With the above directions, the appeal is disposed of along with pending application(s), if any.

9. Registry is directed to supply a copy of the present order to the Trademark Registry at [email protected] for compliance.

SANJEEV NARULA, J JANUARY 4, 2024 as C.A.(COMM.IPD-TM) 1/2024 Page 5 of 5 This is a digitally signed order.

The authenticity of the order can be re-verified from Delhi High Court Order Portal by scanning the QR code shown above. The Order is downloaded from the DHC Server on 06/01/2024 at 21:55:26

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Delhi High Court - Orders