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Modi Naturals Limited vs The Regisrar Of Trade Marks on 4 January, 2023

Author: Sanjeev Narula

Bench: Sanjeev Narula

                          $~3
                          *      IN THE HIGH COURT OF DELHI AT NEW DELHI
                          +      C.A.(COMM.IPD-TM) 90/2021
                                 MODI NATURALS LIMITED                                          ..... Appellant
                                                      Through:       Mr. P.K. Jain, Advocate.

                                                      versus

                                 THE REGISRAR OF TRADE MARKS                                  ..... Respondent
                                                      Through:       Mr. Harish Vaidyanathan Shankar,
                                                                     CGSC with Mr. Srish Kumar Mishra,
                                                                     Mr. Sagar Mehlawat and Mr.
                                                                     Alexander    Mathai     Paikaday,
                                                                     Advocates.

                                 CORAM:
                                 HON'BLE MR. JUSTICE SANJEEV NARULA
                                                      ORDER

% 04.01.2023

1. The present appeal under Section 91 of the Trade Marks Act, 1999, [hereinafter "the Act"] is directed against statement of grounds dated 21st February, 2019 of decision/ refusal order dated 23rd January, 2019 refusing Appellant's trademark application No. 2601153 for registration of word mark "OLEEV ACTIVE" [hereinafter "subject mark"] in Class 29 for edible oils.

2. The statement of grounds of decision reads as under:

"With reference to the above and request on Form TM-M dated 20/02/2019. It has been decided by the Registrar of Trade Marks to inform you that hearing in respect of above application was held on 23/01/2019 Signature Not Verified Digitally Signed C.A.(COMM.IPD-TM) 90/2021 Page 1 of 4 By:SAPNA SETHI Signing Date:05.01.2023 11:14:05 and the said application is refused on the following Grounds;

* Adv. P.K. Jain present, Heard and reply also seen. The applicant failed to overcome the objection raised In the Examination report. Hence Refused.

* 9 - Absolute grounds for refusal of registration. * 9(1)(a) - The trade mark is devoid of any distinctive character, that is to say, not capable of Distinguishing the goods or services of one person from those of another person:

* 9(1)(b) - The Trade Mark consist exclusively of marks or Indications which 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 services."

3. Mr. P.K. Jain, counsel for Appellant states that the mark "OLEEV ACTIVE" has been continuously used by Appellant since its adoption on 06th September, 2011. He contends that the mark is distinctive and cannot be considered as descriptive of the goods falling under Class 29. Reliance is placed on Appellant's registration under application No. 2471104 for device mark viz. " " as also on copyright registration No. A- 109580/2014 dated 31st March, 2014 of an art work/ label/ trade dress, both incorporating the phrase "OLEEV ACTIVE".

4. Per Contra, Mr. Harish Vaidyanathan Shankar, counsel for Respondent, opposes the appeal arguing that reasoning given by Senior Examiner is in accordance with the Act and rules framed thereunder, and no interference is warranted.

5. The Court has considered the afore-noted submissions. Appellant's mark - "OLEEV ACTIVE" comprises of two words "OLEEV" and "ACTIVE". The word "OLEEV" is a stylistic and invented way of spelling the word "OLIVE", but does not have any dictionary meaning. Addition of the word "ACTIVE" to "OLIVE" is perhaps only to give an impression that Appellant's product would keep the consumers active and fit in daily life. When the two words are put together, the resultant term "OLEEV ACTIVE", at best, can only be considered as suggestive, and not descriptive of the kind, quality, quantity, geographical origin etc. As regards the objection of non-distinctiveness, one cannot lose sight of the Appellant's prior registration under application No. 2471104 for afore-noted device mark. Thus, in the opinion of the Court, objection under Section 9(1)(a) or

(b) of the Act cannot sustain.

6. For foregoing reasons, appeal is allowed with following directions:

(i) The impugned statement of grounds dated 21st February, 2019 and refusal order dated 23rd January, 2019, are set aside. Trademark Registry is directed to proceed for advertisement of application No. 2601153 for word mark "OLEEV ACTIVE" in Class 29, within a period of three months from today.

(ii) If there is any opposition, the same shall be decided on its own merits, uninfluenced by observations made hereinabove.

(iii) No exclusive rights in the word "ACTIVE" shall vest in the Appellant. This disclaimer shall be reflected in the trade marks journal at the time of advertisement as also if the subject mark ultimately proceeds for registration.

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

8. 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, 2023 as Signature Not Verified Digitally Signed C.A.(COMM.IPD-TM) 90/2021 Page 4 of 4 By:SAPNA SETHI Signing Date:05.01.2023 11:14:05