Delhi High Court - Orders
Biogaia Ab vs Senior Examiner Of Trade Marks on 13 December, 2022
Author: Sanjeev Narula
Bench: Sanjeev Narula
$~3
* IN THE HIGH COURT OF DELHI AT NEW DELHI
+ C.A.(COMM.IPD-TM) 74/2021
BIOGAIA AB ..... Appellant
Through: Mr. Peeyoosh Kalra, Ms. V. Mohini,
Mr. Udayvir Rana, Advocates.
versus
SENIOR EXAMINER 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
% 13.12.2022
1. The present appeal under Section 91 of Trademarks Act, 1999 [hereinafter, "the Act"] impugns refusal order dated 14th September, 2018 read along with statement of grounds dated 07th January, 2019, both issued by Senior Examiner of Trademarks whereby Appellant's application no. 2717558 for "PROTECTIS" mark under class 5 [hereinafter, "subject mark"], has been refused. The relevant portion of refusal order and impugned order is extracted hereunder:
Refusal order "The trade mark applied for is objectionable under Section 9/11 of the Act. The application is accordingly refused."Signature Not Verified Digitally Signed C.A.(COMM.IPD-TM) 74/2021 Page 1 of 5 By:SAPNA SETHI Signing Date:21.12.2022 20:22:00
Statement of grounds "Advocate Snehal appeared. Application is devoid of any distinctive character. Objection under Section (9) sustained. Identical/Similar mark already on record. The applicant filed the trademark on proposed to be used basis. Likelihood of confusion. Objection under Section (11) sustained. Perused. Trademark refused on merit. * 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. Appellant's application has been refused under Section 9(1)(a) and (b) and Section 11(1)(a) and (b). First, objections under Section 11 are being dealt with. The examination report dated 07th September, 2015 cited following nine conflicting marks:
Signature Not Verified Digitally Signed C.A.(COMM.IPD-TM) 74/2021 Page 2 of 5 By:SAPNA SETHI Signing Date:21.12.2022 20:22:003. Mr. Peeyoosh Kalra, counsel for Appellant, states that above-noted marks do not preclude registration of Appellant's marks as: Applications No. 2700380, 2643373, 2700380, 1914543 have been refused; Applications No. 1115216 and 1309639 are presently objected to, and not registered; Application No. 1325696 has lapsed on account of non-renewal, and Applications No. 1521760 and 1682710 have been abandoned. Considering the same, the objection under Section 11 (1)(a) and (b) is no longer Signature Not Verified Digitally Signed C.A.(COMM.IPD-TM) 74/2021 Page 3 of 5 By:SAPNA SETHI Signing Date:21.12.2022 20:22:00 sustainable.
4. As regards objection under Section 9(1)(a), subject mark -
"PROTECTIS" is an arbitrary term and does not have a dictionary meaning. When applied to class 5 goods i.e., pharmaceutical products, it is certainly not devoid of distinctiveness, and is capable of distinguishing Appellant's goods from others. Qua objection under Section 9(1)(b), no convincing ground/ reason has been brought forth to indicate that subject mark may serve in trade to designate the kind, quality, quantity, intended purpose or geographical origin. As noted earlier, the word "PROTECTIS" has no meaning and thus, cannot be said to be descriptive of characteristics of goods sold thereunder.
5. That apart, Appellant holds registration of subject mark in several other countries, details whereof are as follows:
REGISTRATION MARK JURISDICTION DATE OF
NUMBER REGISTRATION
4486676 PROTECTIS United States of February 25, 2014
America
010279421 PROTECTIS EUIPO September 21, 2011
840077416 PROTECTIS Brazil March 30, 2012
01163289 PROTECTIS Benelux July 15, 2008
302199394 PROTECTIS Hong Kong March 23, 2012
01556442 PROTECTIS Taiwan January 01, 2013
6. In view of the above, grounds for refusal are unmerited and accordingly, the appeal is allowed with following directions:
Signature Not Verified Digitally Signed C.A.(COMM.IPD-TM) 74/2021 Page 4 of 5 By:SAPNA SETHI Signing Date:21.12.2022 20:22:00(i) Impugned order dated 14th September, 2018, is set aside. Trademark Registry is directed to process the registration application bearing No. 2717558 for registration of subject mark.
(ii) Subject mark be advertised within a period of three months from today.
(iii) If there is any opposition, the same shall be decided on its own merits, uninfluenced by observations made hereinabove.
(iv) It is clarified that rights in subject mark shall be restricted to combination of words "PROTECTIS" as depicted above. There shall be no exclusive rights in the words, "PROTECT". This disclaimer shall be reflected in the trade marks journal at the time of advertisement and also if the subject mark ultimately proceeds for registration.
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 13, 2022 "Bhupi"
Signature Not Verified Digitally Signed C.A.(COMM.IPD-TM) 74/2021 Page 5 of 5 By:SAPNA SETHI Signing Date:21.12.2022 20:22:00