Delhi High Court - Orders
Whirlpool Properties, Inc vs The Registrar Of Trade Marks on 5 January, 2023
Author: Sanjeev Narula
Bench: Sanjeev Narula
$~4
* IN THE HIGH COURT OF DELHI AT NEW DELHI
+ C.A.(COMM.IPD-TM) 38/2022
WHIRLPOOL PROPERTIES, INC. ..... Appellant
Through: Mr. Pranay Bali and Ms. Sucharitha
Banda, Advocates.
versus
THE REGISTRAR OF TRADE MARKS ..... Respondent
Through: Mr. Harish Vaidyanathan Shankar,
CGSC with Mr. Srish Kumar Mishra,
Mr. Sagar Mehlawat and Mr.
Alexander Mathai Paikaday,
Advocates for R-2.
CORAM:
HON'BLE MR. JUSTICE SANJEEV NARULA
ORDER
% 05.01.2023
1. Present appeal under Section 91 of the Trade Marks Act, 1999 [hereinafter "the Act"], impugns order dated 19th September, 2018 read along with statement of grounds of decision dated 07th January, 2019, both issued by Senior Examiner, whereby Appellant's application No. 2557910 for device mark viz. " " [hereinafter "subject mark"] in Class 03 for goods in the nature of - combination cleaner with deodorizer for clothes, washing machines etc., has been refused. Relevant portion of statement of grounds of decision, is extracted hereunder:
"With reference to the above and request on Form TM-M dated 11/10/2018. It has been decided by the Registrar of Trade Marks to inform you that hearing in respect of above application was held on 06/09/2018 Signature Not Verified Digitally Signed C.A.(COMM.IPD-TM) 38/2022 Page 1 of 6 By:SAPNA SETHI Signing Date:06.01.2023 18:46:13 and the said application is refused on the following Grounds; * Advocate Abhimanyu appeared. Application is devoid of any distinctive character. Objection under Section (9) sustained. Identical/Similar mark already on record. There is no affidavit and supporting document is on record claiming the use and distinctiveness of the mark. Likelihood of confusion. Objection under Section (11) sustained. Perused. Trademark refused on merit.
* 9-Absolute grounds for refusal of registration. * 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.
Application is devoid of any distinctive character. Objection under Section (9) sustained. Identical/Similar mark already on record. There is no affidavit and related supporting document is on record claiming the use and distinctiveness of the mark. Likelihood of confusion. Objection under Section (11) sustained. Perused.
Trademark refused on merit."
2. Mr. Pranay Bali, counsel for Appellant submits that aforesaid reasons for refusal are erroneous and without any sufficient cause. Appellant had filed: (i) details of worldwide registrations and evidence of use of subject mark; (ii) reply to Examination Report dated 17th July, 2014; and (iii) an affidavit of evidence in support of prior use, which have not been taken into consideration by Respondent. Further, subject mark is already registered in India under different classes which indicates that Respondent has accepted Signature Not Verified Digitally Signed C.A.(COMM.IPD-TM) 38/2022 Page 2 of 6 By:SAPNA SETHI Signing Date:06.01.2023 18:46:13 subject mark to be distinctive and thus, grounds of refusal are not sustainable.
3. Per contra, Mr. Harish Vaidyanathan Shankar, counsel for Respondent, opposes the application and states that reasons given in the Statement of Grounds are in accordance with the Act and the rules framed thereunder, and no interference is warranted.
4. The Court has considered the afore-noted submissions. The subject mark has been objected to under Section 9(1)(a) and (b) and Section 11(1)(a) and (b) of the Act. Although reference is made to afore-noted provisions, no reasoning has been supplied to support the conclusion drawn by Senior Examiner.
5. Be that as it may, subject mark comprises of the word "AFFRESH" a coined and invented word written in a stylized manner, which does not have a dictionary meaning. It is therefore, inherently distinctive and the objection under Section 9(1)(a) of the Act is not sustainable. As regards objection under Section 9(1)(b) of the Act, the Court finds that the subject mark does not readily conjure up the image of the goods it is sought to be applied to. Accordingly, adoption of said mark, in relation to said goods, is not descriptive, but can only be considered as suggestive.
6. As regards objection under Section 11 of the Act, the similar cited marks are as follows:
Signature Not Verified Digitally Signed C.A.(COMM.IPD-TM) 38/2022 Page 3 of 6 By:SAPNA SETHI Signing Date:06.01.2023 18:46:137. Amongst the afore-noted cited marks, Mr. Bali has pointed out that marks at serial no. 1, 5, 8 and 11 viz., "FRESH COVER", "FRESH MAKE UP", "FRESHEE" and "FRESH MIX", had lapsed as on the date of the Signature Not Verified Digitally Signed C.A.(COMM.IPD-TM) 38/2022 Page 4 of 6 By:SAPNA SETHI Signing Date:06.01.2023 18:46:13 impugned order. Further, mark at serial no. 4 viz. ' ' has since lapsed. Remaining marks, on a comparison are found to be prima facie dissimilar. It is a well settled principle that comparison has to be made between two trademarks as a whole.1 Subject mark, when taken as a whole, is distinctive and not deceptively similar to said marks. That apart, Appellant already has registration in its favour of identical device mark in in several other jurisdictions such as U.S.A., Canada, Australia, Indonesia, Mexico, Hong Kong including within India (vide application No. (s) 2557911 and 2557912 under Classes 07 and 11, respectively).
8. For fore-going reasons, grounds for refusal cannot sustain and accordingly, present appeal is allowed with following directions:
(i) Impugned order dated 19th September, 2018 is set aside.
(ii) Trademark Registry is directed to process the registration application for the subject mark.
(iii) Subject mark be advertised within a period of three months from today.
(iv) If there is any opposition to the said application, the same shall be decided on its own merits uninfluenced by observations made hereinabove.
9. With the above directions, the appeal is disposed of.
10. Registry is directed to supply a copy of the present order to the 1 Cadilla Healthcare Ltd. v. Cadilla Pharmaceuticals Ltd., 2001 SCC OnLine SC 578.
Signature Not Verified Digitally Signed C.A.(COMM.IPD-TM) 38/2022 Page 5 of 6 By:SAPNA SETHI Signing Date:06.01.2023 18:46:13Trademark Registry at [email protected] for compliance.
SANJEEV NARULA, J JANUARY 5, 2023 as Signature Not Verified Digitally Signed C.A.(COMM.IPD-TM) 38/2022 Page 6 of 6 By:SAPNA SETHI Signing Date:06.01.2023 18:46:13