Delhi High Court - Orders
Hoffmann Neopac Ag vs The Senior Examiner Of Trade Marks Delhi on 21 March, 2022
Author: Prathiba M. Singh
Bench: Prathiba M. Singh
Signature Not Verified
Digitally Signed
By:DEVANSHU JOSHI
Signing Date:24.03.2022
05:24:39
$~4
* IN THE HIGH COURT OF DELHI AT NEW DELHI
+ C.A.(COMM.IPD-TM) 15/2022
HOFFMANN NEOPAC AG ..... Appellant
Through: Mr. Peeyoosh Kalra, Ms. V.
Mohini, Ms. Aarti Aggarwal and
Mr. Rohan, Advocates.
(M:9818386010)
versus
THE SENIOR EXAMINER OF TRADE MARKS
DELHI ..... Respondent
Through: Mr. Kirtiman Singh, CGSC.
CORAM:
JUSTICE PRATHIBA M. SINGH
ORDER
% 21.03.2022
1. This hearing has been done through hybrid mode.
2. The present appeal has been filed challenging the impugned order dated 3rd October, 2019, passed by the Senior Examiner of Trade Marks, Delhi, in Application No.2908564 for the registration of the mark 'POLYFOIL' as a trade mark in Class 99 in the name(s) of M/s Hoffmann Neopac AG. Vide the said impugned order, the trademark registration for the word mark 'POLYFOIL' has been rejected as being devoid of distinctive character not capable of distinguishing goods as envisaged under Section 9 of the Trademarks Act (hereinafter "Trademarks Act"). The application filed by the Appellant was refused under Section 18 of the Trademarks Act.
3. After a perusal of the examination report, this Court notes that another trademark bearing no.973277 for the mark 'POLYFILL', which was sought in respect of 'PILLOWS, CUSHIONS, QUILTS AND MATRESSES ALL C.A.(COMM.IPD-TM) 15/2022 Page 1 of 4 Signature Not Verified Digitally Signed By:DEVANSHU JOSHI Signing Date:24.03.2022 05:24:39 BEING GOODS INCLUDED IN CLASS 20' was also cited. The status of the said mark is stated to be shown as 'REMOVED'. Mr. Kalra, ld. counsel submits that the said mark has been abandoned. On the last date being 2nd March, 2022, ld. Counsel for the Appellant was directed to seek instructions on the following two aspects:
(1) The specific products for which the mark 'POLYFOIL' is being used by the Appellant in foreign countries and in India separately. (2) The imposition of condition that there would be no exclusive rights on the terms 'POLY' and 'FOIL' separately and the registration would confer no exclusive rights with respect to the said two terminologies separately.
4. Ld. counsel for the Appellant has today reverted with instructions and submits that the following are the products in Class 6 and Class 20 for which the Appellant seeks to register the trademark 'POLYFOIL':
Class 6 Tubes of metal for packaging cosmetic products, personal care products, pharmaceutical products and chemical products for technical use, as well as for foodstuffs and luxury foodstuffs. Class 20 Tubes of plastic for packaging cosmetic products, personal care products, pharmaceutical products and chemical products for technical use, as well as for foodstuffs and luxury foodstuffs.
5. The primary objection of the Registrar of Trademarks is that the mark 'POLYFOIL' lacks distinctiveness under Section 9 of the Trade Marks Act as it is devoid of distinctive character.
6. A perusal of the appeal filed by the Appellant shows that the Appellant is a well-known company engaged in the production of a variety of high-quality metal and plastic packaging containers, and tubes for C.A.(COMM.IPD-TM) 15/2022 Page 2 of 4 Signature Not Verified Digitally Signed By:DEVANSHU JOSHI Signing Date:24.03.2022 05:24:39 pharmaceutical, dental and cosmetic products. It was founded way back in 1904 in Switzerland. The international trade mark 'POLYFOIL' was adopted by the Appellant in 1979 in Switzerland. Today, the Appellant is stated to be producing metal and plastic packaging across four locations in Thun, Switzerland, Hungary and Holland. The Appellant is stated to be offering the pharmaceutical and dietary and food industry, food-suitable and flavour safe tinplate tins as well as 'POLYFOIL' tubes in which food supplements, liquids and creams are packed to remain fresh. The Appellant is also stated to have received various awards for its packaging solutions. Consequently, the Appellant had also filed the trade mark application in question, seeking registration in India on 23rd February, 2015.
7. In view of these facts, the mark having been adopted more than 40 years ago internationally and having been used, this Court is of the opinion that the Appellant's mark would be entitled to be advertised before acceptance under the proviso to Section 20(1) read with Section 9(1) of the Trademarks Act, with the condition that `no exclusive rights shall be claimed in the terms POLY and/or FOIL, if used separately and it is only for the combination that the trademark registration would vest exclusive rights'. This would be subject to any oppositions being filed by any third party, which shall be decided on its own merits.
8. It is made clear that nothing said in the present order would affect any opposition proceedings with respect to the present trademarks. The advertisement in the trademark journal shall, however, bear the condition, which has now been set out above. The said advertisement shall be issued within two months.
9. Accordingly, the present appeal is allowed in the above terms. All C.A.(COMM.IPD-TM) 15/2022 Page 3 of 4 Signature Not Verified Digitally Signed By:DEVANSHU JOSHI Signing Date:24.03.2022 05:24:39 pending applications are also disposed of.
10. The digitally signed copy of this order, duly uploaded on the official website of the Delhi High Court, www.delhihighcourt.nic.in, shall be treated as the certified copy of the order for the purpose of ensuring compliance. No physical copy of orders shall be insisted by any authority/entity or litigant.
PRATHIBA M. SINGH, J.
MARCH 21, 2022/dk/ms C.A.(COMM.IPD-TM) 15/2022 Page 4 of 4