Seal For Life Industries Us Llc vs The Registrar Of Trade Marks on 14 October, 2022

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Delhi High Court

Seal For Life Industries Us Llc vs The Registrar Of Trade Marks on 14 October, 2022

1. Present appeal has been filed under Section 91 of the Trade Marks Act, 1999 (hereinafter referred to as the 'Act') assailing two orders dated 29.07.2020 and 23.12.2021, passed by the Senior Examiner of Trade Marks.

2. By order dated 29.07.2020, Respondent refused registration of the trademark application bearing No. 2902137 in class 09 for the mark 'ANODEFLEX' under Section 9(1)(b) of the Act and vide order dated 23.12.2021, detailed grounds of refusal were published by the Respondent. As the impugned order indicates, the application has been rejected on the ground that the mark ANODEFLEX has a dictionary meaning and is descriptive of the products in respect of which registration is sought.

Signature Not Verified Signed By:KAMAL KUMAR C.A.(COMM.IPD-TM) 120/2022 Page 1 of 9 Signing Date:25.10.2022 23:05:52

Neutral Citation Number: 2022/DHC/004437 Relevant part of the order reads as follows:

"Submitted:

Disposal: TM-M-Request for statement of grounds of decision 2902137 The Trade Mark "AnodeFlex" in class 9.

With reference to the Trade Mark Application no. 2902137 The Trade Mark "AnodeFlex" in class 9 with respect to the goods "Electric apparatus and instruments, not included in other classes, electric cables and wires, insulated; non-metallic sheaths for electric cables and wires; electric element coils; electric resistor materials and electric conductor materials; electric apparatus and instruments to prevent, remove, or fight off against rust in metal surfaces; cable materials for protection against electromagnetic influence; thermostats, electric current conductors, electric junction boxes, electrical connectors, fuses, plugs, sockets, end pieces, contact cards, wall socket boxes, as well as parts and fittings of the above mentioned goods, not included in other classes".

In the Subject matter the Trade Marks Application no 2902137 The Trade Mark 'AnodeFlex' in class 9 in its dictionary meaning is an impressed current, flexible cable anode system for use in cathodic protection of buried structures. Placed alongside a pipe or other buried metal structure, AnodeFlex provides uniform cathodic protection to every point, with a minimum of interference from adjacent structures which is highly descriptive to the goods applied for.

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 service or other characteristics of the goods or service. SEC 9(1) B OBJECTION HENCE REFUSED. THE MARK IS DESCRIPTIVE. OBJECTION UNDER SECTION 9 (1) B OF THE ACT Hence the request has disposed off accordingly."

Signature Not Verified Signed By:KAMAL KUMAR C.A.(COMM.IPD-TM) 120/2022 Page 2 of 9 Signing Date:25.10.2022 23:05:52

Neutral Citation Number: 2022/DHC/004437

3. Bereft and shorn of unnecessary details and concisely put, contentions of the Appellant inter alia are: (a) the mark 'ANODEFLEX' is a coined term and when seen as a whole does not have a dictionary meaning;

(b) Appellant through its predecessor has been using the mark since early 1980s in the International commercial arena, when the application for the formative mark 'RAYCHEM ANODEFLEX' was filed in U.S.A. and was granted registration on 26.02.1985; (c) in India, the Appellant through its predecessor has been using the mark since 31.03.1994; (d) Appellant enjoys registrations in the trademark in several jurisdictions across the world including but not limited to Canada, Brazil, Japan, Switzerland, Italy etc. and no objection was ever raised that the mark is descriptive and thus, a similar treatment ought to be meted out in India; (e) impugned order is based on an erroneous understanding that the mark ANODEFLEX has a dictionary meaning and this conclusion is drawn based on contents, deduced from third party websites referring to the product description of ANODEFLEX, available on Appellant's own website; (f) from a search on various online dictionaries such as Oxford, Collins, Macmillan, Merriam-Webster, etc., it is clear that the alleged meaning of the term, noted in the impugned order, is not to be found in any dictionary; and (g) Respondent has overlooked the Proviso to Section 9 of the Act and failed to appreciate that the trademark is a unique and unusual combination of 'ANODE' and 'FLEX' and seen in entirety does not serve in the trade to designate kind, quality, quantity or characteristics of the goods and having been vastly, extensively and continuously used for a long period of time in the global arena as well as in India for goods in class 09, has acquired indubitable distinctiveness.

Signature Not Verified Signed By:KAMAL KUMAR C.A.(COMM.IPD-TM) 120/2022 Page 3 of 9 Signing Date:25.10.2022 23:05:52

Neutral Citation Number: 2022/DHC/004437

4. Learned counsel for the Appellant places reliance on the judgment in Globe Super Parts v. Blue Super Flame Industries, 1985 SCC OnLine Del 373, wherein it was held that the contention that 'Super' is a laudatory word, 'Flame' is descriptive, therefore, 'SUPERFLAME' cannot be exclusively appropriated, is based upon a misconception that it is permissible to dissect the word SUPERFLAME. The word has to be considered as a whole. Reliance is also placed on Living Media India Ltd. v. Jitender V. Jain and Anr., 2002 SCC OnLine Del 605, wherein the Court held that a combination of certain words can be registered as a trademark if a prior, long, extensive and continuous user in relation to the goods for which registration is sought, is shown though separately, the words being descriptive or dictionary words may not pass the muster.

5. Mr. Harish Vaidyanathan Shankar, learned Central Government Standing Counsel appearing on behalf of the Respondent, per contra, contends that the mark ANODEFLEX is hit by the provisions of Section 9(1)(b) of the Act being descriptive in nature and sufficient documentation/evidence has not been provided by the Appellant to establish its presence in India. It is also argued that the registration of the mark RAYCHEM ANODEFLEX under no. 73472523 stands cancelled under Section 7 of the Act, on account of the registrant having surrendered the registration. Attention of the Court is drawn to various entities who are purportedly using either FLEX or ANODE as names of their products such as LIDA® Flex Anodes, TELPRO MMO Flex-Anode etc.

6. Heard the learned counsels for the parties.

7. As per the narrative in the Appeal, an application for registration of the trademark 'ANODEFLEX' was filed by the Appellant on 13.02.2015 in Signature Not Verified Signed By:KAMAL KUMAR C.A.(COMM.IPD-TM) 120/2022 Page 4 of 9 Signing Date:25.10.2022 23:05:52 Neutral Citation Number: 2022/DHC/004437 respect of goods falling under class 09 in the name of COVALENCE SPECIALTY ADHESIVES LLC, A Delaware Corporation, claiming user since 31.03.1994, in India. The mark has been adopted and used in India in relation to inter alia design, supply, installation and commissioning of cathodic protection systems. Appellant's predecessor(s) worked with various reputed organisations and undertakings in India such as IOCL, GAIL and entered into several contracts between July, 1994 to January, 2007. The mark is registered in several jurisdictions across the world and no trademark office raised any objection that it is descriptive. Appellant uses the domain name www.sealforlife.com, which is prominently displayed on its website showing its commercial presence. The trademark is also shown on several social media platforms such as LinkedIn, YouTube, etc. Search of the mark ANODEFLEX, on various search engines like Google, Yahoo, returns results solely associated with the Appellant's products and prominently showcases that apart from the Appellant's website, many third-party websites have made its products available for sale.

8. There is no gainsaying that any trademark, which steers clear of the objections under the provisions of the Act, is entitled to registration and the grounds on which registration of a mark used or proposed to be used as a trademark may be refused, are provided in Sections 9, 11 and 13 of the Act. Insofar as distinctiveness is concerned, it is a settled law that a mark can be either inherently distinctive or acquire distinctiveness through secondary meaning. Inherently distinctive marks such as arbitrary, invented and coined marks, are granted higher degree of protection. Suggestive marks may also fall in the first category while descriptive marks can be registered, provided they have acquired a secondary meaning. Therefore, it cannot be said that a Signature Not Verified Signed By:KAMAL KUMAR C.A.(COMM.IPD-TM) 120/2022 Page 5 of 9 Signing Date:25.10.2022 23:05:52 Neutral Citation Number: 2022/DHC/004437 mark can be straightway rejected only because it appears to be descriptive in character. The Senior Examiner would be required to examine whether the mark has acquired distinctiveness, by scrutinizing its extent and length of user, registrations, if any, in other jurisdictions etc. and any decision that is taken by the Senior Examiner, in my view, should be an informed and a reasoned one. It needs no reiteration that right to register a mark is a valuable right and a decision bereft of reasons cannot be sustained when it seeks to take away a valuable right.

9. Perusal of the impugned order reflects that the Senior Examiner has objected to the mark 'ANODEFLEX' under Section 9(1)(b) of the Act on the ground that it is descriptive. Relying on its alleged dictionary meaning i.e. impressed current, flexible cable anode system for use in cathodic protection of buried structures, it is stated that placed alongside a pipe or other buried metal structure, AnodeFlex provides uniform cathodic protection to every point, with a minimum of interference from adjacent structure and is highly descriptive to the goods in respect of which registration of the trademark is sought.

10. Amongst the myriad of arguments canvassed by learned counsel for the Appellant, the prime contention is that the Respondent has arbitrarily refused the application in total disregard of the proviso to Section 9(1) of the Act, which provides that a trademark shall not be refused registration if before the date of the application for registration, it has acquired a distinctive character as a result of the use made of it. The application was filed on 13.02.2015, claiming user since 31.03.1994. Section 9 of the Act provides for absolute grounds for refusal of registration of a mark and one of them is if a mark is descriptive in nature. It has been held in several Signature Not Verified Signed By:KAMAL KUMAR C.A.(COMM.IPD-TM) 120/2022 Page 6 of 9 Signing Date:25.10.2022 23:05:52 Neutral Citation Number: 2022/DHC/004437 judgments that where a mark is descriptive but it is established that it has acquired a secondary meaning, it is amenable to grant of registration. Likewise, the proviso to Section 9 of the Act, which is an exception, permits registration of a mark which has acquired a distinctive character. Distinctive nature of a mark can be established based on character of the mark, extent of use of the mark, global priority in adoption, well-known status, advertising and promotional investment, etc. [Ref.: Dubai Islamic Bank v. Union of India & Ors. decided on 04.12.2019 in W.P.(C) 12749/2019]. Thus, the Registrar is required to consider all of these factors before arriving at a conclusion that there is an absolute bar against registration of the mark.

11. Perusal of the averments made in the appeal shows that the Appellant through its predecessor has been using the mark ANODEFLEX in the international commercial arena since mid 1980s and in India since 31.03.1994, through its predecessor and documents have been filed in support thereof. Appellant has obtained registrations in the said mark in several jurisdictions of the world including but not limited to Canada, Italy, Japan, etc. and it is the stated case of the Appellant that no objection on ground of 'descriptiveness of the mark' was raised by the respective Trade Mark Offices in the said jurisdictions. A list of foreign registrations along with copies of Registration Certificates are stated to be filed before the Trade Marks Registry. Apart from the website of the Appellant, commercial presence of the Appellant and use of its trademark can be found on various social/professional media platforms like Linkedin, YouTube, etc., which have disseminated awareness of the Appellant's mark in respect of the technology and product thereunder. Various third-party websites showcase the Appellant's product, as averred. Appellant's predecessor has worked for Signature Not Verified Signed By:KAMAL KUMAR C.A.(COMM.IPD-TM) 120/2022 Page 7 of 9 Signing Date:25.10.2022 23:05:52 Neutral Citation Number: 2022/DHC/004437 several reputed Indian organisations and undertakings such as IOCL, GAIL, etc., in respect of which documents pertaining to the contracts entered into in India between July 1994 to January 2007 were also filed. In support of the continuous and extensive use of the mark, copies of redacted invoices from July 2008 to March 2019 are filed along with copies of manufacturers' certificates of inspection. In view of all these, the submission of the Appellant is that the documents filed before the Trade Marks Registry evidence that the mark ANODEFLEX has attained substantive goodwill and reputation amongst members of the trade and public in India and is associated with the Appellant. The documents corroborate the fact that the mark has become distinctive and the Senior Examiner has erred in ignoring the proviso to Section 9(1) of the Act for the purpose of processing the application for registration and the Court finds merit in the said submission.

12. In view of these facts and the plethora of documents relied upon by the Appellant, evidencing that the mark was adopted over 40 years ago internationally and nearly 3 decades ago in India, this Court is of the opinion that the Respondent erred in outrightly rejecting the mark on the sole ground that it is descriptive and without even examining whether the mark had acquired a secondary significance or had become distinctive.

13. In view of the aforesaid, the impugned order is quashed and set aside. The matter is remitted back to the Respondent to reconsider the same afresh and in case, it is found that the application does not suffer from the fatal infirmities under the provisions of the Act, the mark ANODEFLEX shall proceed for advertisement in the Trade Marks Journal, in accordance with law.

Signature Not Verified Signed By:KAMAL KUMAR C.A.(COMM.IPD-TM) 120/2022 Page 8 of 9 Signing Date:25.10.2022 23:05:52

Neutral Citation Number: 2022/DHC/004437

14. It is made clear that this Court has not expressed any opinion on the merits of the case and the matter shall be decided in accordance with law and uninfluenced by any observations made in the present judgment.

15. Appeal is accordingly allowed and disposed of in the aforesaid terms.

JYOTI SINGH, J OCTOBER 14, 2022/shivam/rk Signature Not Verified Signed By:KAMAL KUMAR C.A.(COMM.IPD-TM) 120/2022 Page 9 of 9 Signing Date:25.10.2022 23:05:52

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Delhi High Court