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

[Cites 4, Cited by 0]

Delhi High Court - Orders

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

1. Present appeal under Section 91 of the Trade Marks Act, 1999 [hereinafter "the Act"] impugns refusal order dated 23rd January, 2019 read along with Statement of Grounds dated 22nd February, 2019 whereby Appellant's application No. 2601155 for device mark viz. " "

[hereinafter "subject mark"] under Class 29 for edible oils, was refused.

Signature Not Verified Digitally Signed C.A.(COMM.IPD-TM) 86 /2021 Page 1 of 5 By:SAPNA SETHI Signing Date:05.01.2023 13:50:26

Relevant portion of said Statement of Grounds, is extracted hereunder:

"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 and the said application is refused on the following Grounds;

*Advocate PK Jain appeared. Application is devoid of any distinctive character. Objection under Section (9) sustained. Identical/Similar mark already on record. There is no affidavit and supporting document is on record claiming the use and distinctiveness of the mark. Likelihood of confusion. Objection under Section (11) sustained. Perused. Trademark refused on merit.

* 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.

* 11(1)(a) - Relative grounds for refusal of registration. - The said trade Mark is refused for registration because of its identity with an earlier trade mark and similarity of goods or services covered by the trade mark; or * 11(1)(b) - Relative grounds for refusal of registration.- The said trade Mark is refused for registration because of its similarity to an earlier trade mark and the identity or similarity of the goods or services covered by the trade mark there exists a likelihood of confusion on the part of the public which includes the likelihood of association with the earlier trade mark."

2. Mr. P.K. Jain, counsel for Appellant, argues that subject mark does not lack any distinctiveness and cannot be considered as descriptive of the goods for which it has been applied for. Further, subject mark as a whole has no similarity or identity with any of the marks cited in Examination Report dated 05th March, 2015 [hereinafter "Examination Report"]. Reliance is also placed on other registrations in favour of Appellant, relating to device mark which incorporates the word "OLEEV".

Signature Not Verified Digitally Signed C.A.(COMM.IPD-TM) 86 /2021 Page 2 of 5 By:SAPNA SETHI Signing Date:05.01.2023 13:50:26

3. Mr. Harish Vaidyanathan Shankar, counsel for Respondent, on the other hand, opposes the application and states that the reasons given by Senior Examiner in the impugned order and Statement of Grounds, is in accordance with the Act and the rules framed thereunder and no interference is warranted.

4. The Court has considered the afore-noted submissions. Subject mark is a creative work which comprises of a picture of a can and packet floating on top of a pool of oil. The prominent and unique phrase of words appears therein - "OLEEV ACTIVE" along with a tag line/slogan "HAR BOOND MEIN HEALTH". The word "OLEEV" does not have any dictionary meaning and is a coined and invented word. It is a fancy word which is a twist given to the spelling of the word "OLIVE". The word "ACTIVE" and slogan "HAR BOOND MEIN HEALTH" combined with "OLEEV" is only to hint to the consumer that product would keep the consumer active and healthy in daily life. The combination of words "OLEEV" and "ACTIVE", along with the afore-said slogan in subject mark, renders it more than suggestive and not descriptive. Therefore, Respondent's objection under Section 9(1)(a) or (b) of the Act that subject mark is devoid of distinctiveness or is descriptive cannot sustain.

5. As regards objections under Section 11 of the Act, the Court has perused the conflicting marks contained in Examination Report which are as follows:

Signature Not Verified Digitally Signed C.A.(COMM.IPD-TM) 86 /2021 Page 3 of 5 By:SAPNA SETHI Signing Date:05.01.2023 13:50:26

6. The above marks are prima facie not similar to the Appellant's mark. It is a well settled principle that comparison has to be made between two trademarks as a whole.1 The subject mark, when taken as a whole, is distinctive and not deceptively similar to the marks cited in Examination Report. That prominent feature of the subject mark, the word "OLEEV" also 1 Cadilla Healthcare Ltd. v. Cadilla Pharmaceuticals Ltd., 2001 SCC OnLine SC 578.

Signature Not Verified Digitally Signed C.A.(COMM.IPD-TM) 86 /2021 Page 4 of 5 By:SAPNA SETHI Signing Date:05.01.2023 13:50:26

forms part of a device mark viz. ' ' for which Appellant already has a registration in its favour vide Application No (s) 2032876 & 2032874 in Class 30 and Class 03 respectively.

7. For the foregoing reasons, the grounds for refusal cannot sustain and accordingly the present appeal is allowed with the following directions:

(i) Impugned order dated 23rd January, 2019 is set aside.

(ii) Trademark Registry is directed to process the registration application for the subject 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.

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, 2023 as Signature Not Verified Digitally Signed C.A.(COMM.IPD-TM) 86 /2021 Page 5 of 5 By:SAPNA SETHI Signing Date:05.01.2023 13:50:26

Unlock Advanced Research with PRISMAI

Delhi High Court - Orders