Delhi High Court - Orders
M.I. Industries, Incorporated vs Registrar Of Trade Marks on 15 December, 2022
Author: Sanjeev Narula
Bench: Sanjeev Narula
$~3
* IN THE HIGH COURT OF DELHI AT NEW DELHI
+ C.A.(COMM.IPD-TM) 18/2021
M.I. INDUSTRIES, INCORPORATED ..... Appellant
Through: Mr. Kshitij Saxena and Ms. Rachana
Bishnoi, Advocates.
versus
REGISTRAR OF TRADE MARKS ..... Respondent
Through: Mr. Harish Vaidyanathan Shankar,
CGSC with Mr. Srish Kumar Mishra,
Mr. Sagar Mehlawat, Mr. Alexander
Mathai Paikaday, Advocates.
CORAM:
HON'BLE MR. JUSTICE SANJEEV NARULA
ORDER
% 15.12.2022
1. The present appeal under Section 91(1) of the Trade Marks Act, 1999, is directed against order dated 04th October, 2018 [hereinafter, "impugned order"] read along with statement of reasons dated 31st October, 2018, both issued by Senior Examiner of Trademarks, whereby Appellant's application No. 2739458 for trademark "NATURE'S VARIETY" as wordmark in Class 31 [hereinafter, "subject mark"] on proposed-to-be-used basis, has been declined.
2. The relevant portions of impugned order and statement of reasons are as follows:
Impugned order Signature Not Verified Digitally Signed C.A.(COMM.IPD-TM) 18/2021 Page 1 of 4 By:SAPNA SETHI Signing Date:19.12.2022 15:03:21 "The trade mark applied for is objectionable under Section 9/11 of the Act. The application is accordingly refused."
Statement of reasons "ADV. YOGESH APPEARED, ARGUED/MADE SUBMISSION, HEARD CHECKED APPLICATION, OTHER DETAIL DOCUMENTS, REPLY TO EXAMINATION REPORT, IT APPEARED THAT REPLY IS NOT SATISFACTORY AS TO EXAMINATION. REPORT, CITED MARKS ARE DIFFERENT BUT MARK IS NOT DISTINCTIVE SO OBJ. U/S 9 SUSTAIN MOREOVER IT IS PROPOSED TO BE USED SO BENEFIT OF PROVISO OF SEC. 9 IS NOT PROVIDED, HENCE REFUSED.
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:"
[Emphasis Supplied]
3. Mr. Kshitij Saxena, counsel for Appellant, submits that Appellant has been continuously and uninterruptedly using the subject mark since 2001 in respect of animal foods and has widespread internet presence resulting in goodwill across various countries, including India. He argues that subject mark is distinctive and must be accorded registration in India.
4. Heard the counsel for parties and perused the record. It is firstly noted that although impugned order states that the mark is objectionable under Section 9/11 of the Trademarks Act, the statement of reasons records that cited marks in the examination report are different, but Appellant has been unable to countenance the objection under Section 9 of the Act. Thus, the only ground that merits consideration is whether the subject mark is devoid of distinctiveness and is incapable of distinguishing the goods of Appellant from that of others.
5. The use of subject mark for products such as animal foodstuffs, pet food, pet treats, falling under class 31, cannot be said to be lacking distinctiveness. "NATURE'S VARIETY" consists of common dictionary Signature Not Verified Digitally Signed C.A.(COMM.IPD-TM) 18/2021 Page 2 of 4 By:SAPNA SETHI Signing Date:19.12.2022 15:03:21 words, but when applied together, they have no direct reference to the products. It evokes a feeling that product is made of natural ingredients, but is not the usual way of referring to animal foodstuff or allied goods in trade. It would be far-fetched to say that "NATURE'S VARIETY" immediately creates an association of subject mark to animal food/ healthcare products in the minds of public. Thus, the ground of rejection is not sustainable. Additionally, Appellant holds registration of subject mark in more than 40 countries, including USA, UAE, Australia, Canada, Japan, Korea, Mexico, New Zealand, Norway, Philippines and Switzerland, which evidences its reputation and goodwill.
6. For above-noted reasons, the present appeal is allowed with following directions:
(i) Impugned order dated 04th October, 2018 is set aside. Trademark Registry is directed to proceed for advertisement of application No. 2739458 for trademark "NATURE'S VARIETY", within a period of three months from today.
(ii) If there is any opposition to the said application, the same shall be decided on its own merits uninfluenced by observations made hereinabove.
(iii) It is clarified that Appellant's rights in subject mark shall be restricted to combination of words "NATURE'S VARIETY", as depicted above and no exclusive rights in the words "NATURE" or "NATURE'S" or "VARIETY", separately or individually, shall vest in 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.Signature Not Verified Digitally Signed C.A.(COMM.IPD-TM) 18/2021 Page 3 of 4 By:SAPNA SETHI Signing Date:19.12.2022 15:03:21
7. With the above directions, the appeal is disposed of.
8. Registry is directed to supply a copy of the present order to the Trademark Registry at [email protected] for compliance.
SANJEEV NARULA, J DECEMBER 15, 2022 as Signature Not Verified Digitally Signed C.A.(COMM.IPD-TM) 18/2021 Page 4 of 4 By:SAPNA SETHI Signing Date:19.12.2022 15:03:21