Shiv Nadar Foundation vs The Registrar Of Trade Marks on 12 January, 2023

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Delhi High Court - Orders

Shiv Nadar Foundation vs The Registrar Of Trade Marks on 12 January, 2023

1. The present appeal under Section 91 of the Trade Marks Act, 1999 [hereinafter, "the Act"] is directed against order dated 29th December, 2018 read along with Statement of Grounds of decision dated 01st March, 2019, whereby Appellant's application No. 2735514 for registration of the device mark " " in class 41 [hereinafter, "subject mark"], has been refused.

2. As disclosed in the Statement of Grounds, reasons for rejection are as Signature Not Verified Digitally Signed C.A.(COMM.IPD-TM) 122/2021 Page 1 of 5 By:SAPNA SETHI Signing Date:13.01.2023 14:13:02 under:

"With reference to the above and request on Form TM-M dated 22/02/2019. It has been decided by the Registrar of Trade Marks to Inform you that hearing in respect of above application was held on 24/12/2018 and the said application is refused on the following Grounds;

• Adv appeared and argued. The Trade Mark is not distinctive and descriptive to the services applied, and similar cited marks on record. Hence Refused • 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."

3. Ms. Lakshmidevi Somanathan, counsel for Appellant, states that the cited marks are entirely dissimilar to the subject mark and thus, the objection raised by Respondent is misplaced. Appellant has been using the subject mark since 2012 and has utilised the same in collaboration with the Government of Uttar Pradesh. She further submits that sufficient material was placed before the Senior Examiner of Trademarks indicating that substantial goodwill and reputation has accrued to Appellant from the use of subject mark, but the same has not been considered.

4. On the other hand, Mr. Harish Vaidyanathan Shankar, counsel for Respondent, states that in light of the cited marks, the impugned decision warrants no interference.

5. The Court has considered the aforenoted submissions. The conflicting marks cited in the examination report are as follows:

Signature Not Verified Digitally Signed C.A.(COMM.IPD-TM) 122/2021 Page 2 of 5 By:SAPNA SETHI Signing Date:13.01.2023 14:13:02

6. During the course of hearing, it has emerged that mark under application No. 1424261 was valid up to 24th February, 2016 and has not been renewed since then. The website of Trademark Registry also reflects that the mark is likely to be removed due to non-filing of renewal request within prescribed timeframe. Trademark application No. 2094156 has been withdrawn. The other two cited marks are dissimilar, except for the commonality of the word "SHIKSHA". Further, trademark application No. 2512221 bears a condition that its registration shall give no right to exclusive use of the word "SHIKSHA". Ms. Somanathan submits that Appellant is agreeable to similar condition being imposed on registration of subject mark.

Signature Not Verified Digitally Signed C.A.(COMM.IPD-TM) 122/2021 Page 3 of 5 By:SAPNA SETHI Signing Date:13.01.2023 14:13:02

7. Insofar as objection qua distinctiveness and descriptiveness are concerned, it is well settled in law that device marks have to be looked at as a whole. The subject mark is a unique mark/ logo bearing graphic representation of lotus flower and the name of the institution. Being a composite mark, it cannot be dissected to say that since it contains the word "SHIKSHA", it is descriptive of the services to which it is applied for. The mark, as a whole, comprises of word "SHIKSHA" and "SHIV NADAR FOUNDATION", which is the Appellant's name. That apart, marks under trademark application Nos. 2512221, 1454957 and 1424261 (noted above), also mention the word "SHIKSHA" and were granted registration in the same class. The Court thus, does not find any merit in the objection that subject mark lacks distinctiveness.

8. Considering the above, the Court is inclined to allow the present appeal. Accordingly, following directions are being issued:

i) Order dated 29th December, 2018 is set aside. Trademark Registry is directed to proceed for advertisement of application No. 2735514 for device mark " " in class 41, within a period of three months from today.

ii) If there is any opposition, the same shall be decided on its own merits, uninfluenced by observations made hereinabove.

iii) No exclusive rights in the word "SHIKSHA" shall vest in the Appellant.

This disclaimer shall be reflected in the trade marks journal at the time of Signature Not Verified Digitally Signed C.A.(COMM.IPD-TM) 122/2021 Page 4 of 5 By:SAPNA SETHI Signing Date:13.01.2023 14:13:02 advertisement as also if the subject mark ultimately proceeds for registration.

9. With the above directions, the appeal is disposed of along with pending application(s), if any.

10. Registry is directed to supply a copy of the present order to the Trademark Registry at [email protected] for compliance.

SANJEEV NARULA, J JANUARY 12, 2023 nk Signature Not Verified Digitally Signed C.A.(COMM.IPD-TM) 122/2021 Page 5 of 5 By:SAPNA SETHI Signing Date:13.01.2023 14:13:02

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Delhi High Court - Orders