Delhi High Court - Orders
Nike Innovate C.V vs The Registrar Of Trade Marks on 12 January, 2024
Author: Sanjeev Narula
Bench: Sanjeev Narula
$~5
* IN THE HIGH COURT OF DELHI AT NEW DELHI
+ C.A.(COMM.IPD-TM) 21/2023
NIKE INNOVATE C.V ..... Appellant
Through: Ms. Anuradha Salhotra, Mr. Sumit
Wadhwa and Mr. Ayush Samaddar,
Advocates.
versus
THE REGISTRAR OF TRADE MARKS ..... Respondent
Through: Mr. Harish Vaidyanathan Shankar,
CGSC with Mr. Srish Kumar Mishra,
Mr. Alexander Mathai Paikaday and
Mr. Krishnan V., Advocates.
CORAM:
HON'BLE MR. JUSTICE SANJEEV NARULA
ORDER
% 12.01.2024
1. The present appeal under Section 91 of the Trade Marks Act, 1999 ("Act") challenges order dated 26th April, 2023 passed by Senior Examiner of Trade Marks ("Impugned Order") refusing Applicant's application number 4352051 ("Application") in Class 25 for the mark "THERMA-FIT"
("Subject Mark").
2. Appellant claims that they have coined, conceived and adopted the Subject Mark in relation to goods falling under Class 25 in the year 1992 in the United States and they have been using this mark in several countries across the world including India ever since. At the time of adoption, no such identical or similar mark existed or was known to Appellant. Subsequently, C.A.(COMM.IPD-TM) 21/2023 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 25/01/2024 at 09:42:01 Appellant secured registered of the subject mark in various international jurisdictions including and not limited to US, Canada, European Union, New Zealand etc. Appellant applied to secure the trademark rights in the subject mark in Class 25 for the following goods: "footwear; headwear; clothing; apparel, namely pants, shorts, shirts, t-shirts, sweat shirts, hooded sweatshirts, tank tops, pullovers, warm-up suits, jerseys, sweat pants, underwear, sports bras, dresses, skirts, sweaters, jackets, anoraks, coats, socks, gloves, belts, hosiery, rights, vests, scarves, headbands, bandanas, sweatbands, wrist bands; clothing for athletic use, namely, padded shirts, padded pants, padded shorts; compression sleeves sold as an integral component of athletic clothing, namely for shirts" on 'proposed to be used' basis.
3. Examination Report dated 26th November, 2019 objected to registration of the Subject Mark under Section 9(1)(b) of the Act. Appellant filed a response thereto, and after the conclusion of the proceedings, the Senior Examiner passed the Impugned Order refusing registration of the Subject Mark. Relevant portion of Impugned Order reads as under:
"Section 9(1) (b)- The mark applied for registration is objectionable under S 9(1)(b) 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 applied trademark "THERMA-FIT" for the applied specification "Footwear, headwear, clothing; apparel, namely pants, shorts, shirts, t-shirts, sweat shirts, hooded sweatshirts, tank tops, pullovers, warm-up suits, jerseys, sweat pants, underwear, sports bras, dresses, skirts, sweaters, jackets, anoraks, coats, socks, gloves, belts, hosiery, tights, vests, scarves, headbands, bandanas, sweatbands, wrist bands; clothing for athletic use, namely, padded shirts, padded pants, padded shorts; compression sleeves sold as an integral component of athletic clothing, namely for shirts" is highly descriptive in nature and it serves in trade to designate quality of the applied specification. The words used in the applied trademark indicate the intended purpose of the C.A.(COMM.IPD-TM) 21/2023 Page 2 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 25/01/2024 at 09:42:01 specification. They applicant has applied the mark for thermal clothing. The applied trademark for the applied specification, per se not registrable.
User Claimed:-The application has been filed on proposed to be used basis. No relevant documents filed for establishment of the trademark. The date of application is 19/11/2019. The applicant failed to produce user affidavit and any other relevant material/corroborative evidences in support of application for registration. The applicant produced evidences in support of application for registration but the same is not sufficient to prove the acquired distinctiveness of the trademark.
The Present case also does not fall in category of "proviso" to Section 9 (1) and case of any acquired distinctiveness has not proved by any satisfactory evidence.
The objections raised in the Examination Report under section 9(1)
(b) of the Trade Marks Act, 1999 cannot be waived. After perusal of records and submissions by the attorney in this regard, the registration of the mark is objectionable under section 9(1) (b) of the trademarks act, 1999."
(emphasis supplied)
4. Subject Mark has been subjected to objections under Section 9(1)(b) of the Trademarks Act, as the Senior Examiner of Trade Marks opined that it indicates the intended purpose of the specified goods. The Examiner posited that the application for the Subject Mark, 'THERMA-FIT', was for 'thermal clothing'. However, this assertion is challenged. Ms. Anuradha Salhotra, representing the Applicant, contends that the Subject Mark is not associated with thermal clothing, a claim that is duly noted and recorded by the Court.
5. Analysing the composition of the Subject Mark, which is bifurcated into two components - 'THERMA' and 'FIT', connected by a hyphen, it initially appears to directly describe characteristics of the garments, such as thermal insulation or fitness suitability. This direct description would ordinarily render the mark descriptive and, consequently, lacking in distinctiveness. However, Ms. Salhotra's clarification that the Subject Mark does not pertain to thermal clothing shifts the perspective. In the absence of C.A.(COMM.IPD-TM) 21/2023 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 25/01/2024 at 09:42:02 a direct association with thermal features, "THERMA-FIT" no longer explicitly describes the goods. Instead, it suggests qualities like suitability for colder climates or fitness activities in such environments. This subtlety necessitates a degree of thought or imagination to link the term to the garment's characteristics, leaning the term towards being suggestive. Considering the broad range of goods categorized under Class 25, "THERMA-FIT" is, at best, suggestive. Therefore, in light of these observations, the Court opines that the objection under Section 9(1)(b) of the Act is not applicable in this context.
6. The present appeal is allowed with following directions:
(i) Impugned Order is set aside.
(ii) Trade Marks Registry is directed to process the Application.
(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.
(v) The rights in Subject Mark shall be restricted to combination of words
"THERMA-FIT" as depicted above.
(vi) It is clarified the Subject Mark shall not grant any exclusive rights in
the words "THERMA" or "FIT", separately or individually. No rights in the Subject Mark shall not be applicable for thermal clothing. This disclaimer/ condition and limitation shall be reflected in the Trade Marks Journal at the time of advertisement if the subject mark ultimately proceeds for registration.
7. Disposed of.
C.A.(COMM.IPD-TM) 21/2023 Page 4 of 5This 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 25/01/2024 at 09:42:02
8. Registry is directed to supply a copy of the present order to the Trade Marks Registry at [email protected] for compliance.
SANJEEV NARULA, J JANUARY 12, 2024 d.negi C.A.(COMM.IPD-TM) 21/2023 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 25/01/2024 at 09:42:02