Delhi High Court
Disruptive Health Solutions Private ... vs Registrar Of Trade Marks on 8 July, 2022
Author: Prathiba M. Singh
Bench: Prathiba M. Singh
$~12
* IN THE HIGH COURT OF DELHI AT NEW DELHI
Date of Decision: 8th July, 2022
+ C.A. (COMM.IPD-TM) 133/2022 & I.A. 10334-35/2022
DISRUPTIVE HEALTH SOLUTIONS PRIVATE
LIMITED ..... Appellant
Through: Ms. Abhilasha Nautiyal, Mr. Aditya
Gupta & Mr. Siddharth Varshney,
Advocates (M-7727860808)
versus
REGISTRAR OF TRADE MARKS .... Respondent
Through: Mr. Harish V. Shankar, CGSC with
Mr. Srish Kumar Mishra, Mr. Sagar
Mehlawat & Mr. Alexander Mathai
Paikaday, Advocates.
CORAM:
JUSTICE PRATHIBA M. SINGH
Prathiba M. Singh, J. (Oral)
1. The present appeal under section 91 of the Trade Marks Act, 1999 (hereinafter 'Act') has been filed challenging the impugned order dated 8th December, 2021 passed by the Senior Examiner of Trade Marks. By the impugned order, trade mark application of the Appellant bearing no. 3942420 in Class 10 for the mark 'HEALTHSKOOL' has been rejected by the Respondent under Section 9(1)(b) of the Act on the ground that the mark is descriptive. The case of the Appellant is that the mark 'HEALTHSKOOL' in respect of products falling in Class 10 being bandages, condoms, surgical, medical, dental and veterinary apparatus and instruments, artificial limbs, eyes and teeth, orthopaedic articles suture materials etc is not descriptive in any manner. Ld. Counsel for the Appellant submits that the Appellant already had other registrations for the mark 'HEALTHSKOOL' under various classes. Moreover, the rejection of the application of the Appellant is C.A.(COMM.IPD-TM) 133/2022 Page 1 of 8 Signature Not Verified Digitally Signed By:DEVANSHU JOSHI Signing Date:12.07.2022 17:55:52 under Section 9(1)(b) of the Act and no similar mark has been cited in the examination report.
2. A copy of the paperbook was served upon Mr. Harish V Shankar, Ld. CGSC in the morning. Ld CGSC was asked to confirm if the Appellant had other registrations for the same mark. Post-lunch it is confirmed by Mr. Harish V. Shankar that the Appellant has been granted registrations for the mark HEALTHSKOOL in other classes.
3. Heard. A perusal of the subject trademark application of the Appellant shows that the Appellant has applied for the wordmark 'HEALTHSKOOL' on 'proposed to be used' basis in respect of products falling in Class 10. The mark 'HEALTHSKOOL' has been adopted by the Appellant in 2015 in respect of various medicinal and other products and e- pharmacies. The details of the registrations of the Appellant for the mark 'HEALTHSKOOL' under various classes is as follows:
Registration No. Mark Class Status
3942422 HEALTHSKOOL 44 Registered
3942423 44 Registered
3942421 HEALTHSKOOL 3 Registered
3942419 HEALTHSKOOL 5 Registered
4. The Appellant also uses the domain name
www.healthskoolpharmacy.com which was registered by it in May, 2021. The Appellant has prominently displayed the mark 'HEALTHSKOOL' on its website. The Appellant has, further, widely publicised the mark through C.A.(COMM.IPD-TM) 133/2022 Page 2 of 8 Signature Not Verified Digitally Signed By:DEVANSHU JOSHI Signing Date:12.07.2022 17:55:52 promotional features and advertisement in various publications including newspapers. The case of the Appellant is that it intends to now expand to products falling in Class 10 i.e., for bandages, condoms and other cognate and allied products in the surgical medical field and had, therefore filed the subject application.
5. A perusal of the examination report in respect of the mark 'HEALTHSKOOL' shows that no identical or deceptively similar marks have been cited by the Registrar in the examination report dated 10th October, 2018 and the only objection raised by the Registrar in respect of the mark was under Section 9(1)(b) Act. In the impugned order, the reasons given for rejection are extracted below:
" Advocate Abhilasha appeared Attorney appeared before me and made his/her submissions. I have heard arguments and gone through the records.
Advocate Abhilasha appeared. The mark has been refused in the light of section 9(1)(b) which is "The Trade Mark consist exclusively of marks or indications which serve in trade to designate the 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."
For a trademark to be descriptive, it is sufficient that it is reasonably indicative and descriptive to the kind and nature of services applied. To be descriptive, it is sufficient if information connoting is afforded to the general nature or character of the services.
An exclusive trademark must consist of some arbitrary or fanciful term, figure, device, phrase, to constitute a trademark, when they do not, by their usual and ordinary meaning denote or describe goods or services to which they are applied is clearly indicative to services and liable to be refused to prohibit monopoly by anyone.
C.A.(COMM.IPD-TM) 133/2022 Page 3 of 8 Signature Not Verified Digitally Signed By:DEVANSHU JOSHI Signing Date:12.07.2022 17:55:52Therefore, the use of the expression HEALTHSKOOL for the goods Bandages; condoms;
surgical, medical, dental and veterinary apparatus and instruments; artificial limbs, eyes and teeth; orthopaedic articles; suture materials; therapeutic and assistive devices adapted for the disabled; massage apparatus; apparatus, devices and articles for nursing infants; sexual activity apparatus, devices and articles would only indicate the purpose or the use for which the goods are meant. Moreover, the Trade Mark has been applied on a PROPOSED TO BE USED basis so no question of acquired distinctiveness arises. Hence, refused registration.
After perusal of all the documents on record and submission made by the applicant/ authorised agent it is concluded that applied mark is not registrable because of the reason stated as above. Hence application no 3942420 cannot be accepted and refused accordingly."
6. The objection raised by the Senior Examiner in the impugned order is under Section 9(1)(b) of the Act to the effect that the mark is not distinctive enough as it designates the intended purpose, value, geographical origin etc of the goods and services applied for. The reasoning given by the Senior Examiner is that for any mark to be considered descriptive, it is sufficient that it is reasonably indicative and descriptive of the kind or nature of services applied for. Further, the Senior Examiner also seeks to suggest that for a proprietor to have exclusive rights, the mark 'must' consist of some arbitrary or fanciful terms, figure, device and usual and ordinary meaning of the marks should not be indicative of the services they are intended for and if they do so, they would be liable to be refused.
7. Clearly, the Ld. Senior Examiner seems to have erred in law while applying the standard required for registration of marks. It is the settled position in law that trademarks can be of various categories:
C.A.(COMM.IPD-TM) 133/2022 Page 4 of 8 Signature Not Verified Digitally Signed By:DEVANSHU JOSHI Signing Date:12.07.2022 17:55:52 i. Arbitrary, fanciful and invented marks,
ii. Suggestive marks,
iii. Descriptive marks,
iv. Generic marks.
8. The spectrum of distinctiveness of marks has been the subject matter of various decisions. This Court in Bata India Limited v. Chawla Boot House (2019) 259 DLT 292 held as under:
"26. The spectrum of distinctiveness of marks clearly explains how distinctiveness of marks is to be judged. The spectrum as explained in McCarthy on 'Trade Marks and Unfair Competition'1, can be illustratively depicted as below:
GENERIC- Least Distinctive DESCRIPTIVE- Secondary Meaning Required SUGGESTIVE- Inherently Distinctive (No Secondary Meaning Needed) ARBITRARY/ INVENTED MARKS- Inherently Distinctive (No Secondary Meaning Needed)
27. Even if one considers the nature of the mark 'POWER', it cannot be held to be a descriptive mark. As the well-known author Mr. J. Thomas McCarthy, in the treatise on 'Trademarks and Unfair Competition'2, 1 J. Thomas McCarthy, "McCarthy on Trademarks and Unfair Competition", Vol. 2, Thomson West, 2003, §11:1.2
J. Thomas McCarthy, "McCarthy on Trademarks and Unfair Competition", Vol. 2, Thomson West, 2003, §11:67 & §11.69.
C.A.(COMM.IPD-TM) 133/2022 Page 5 of 8 Signature Not Verified Digitally Signed By:DEVANSHU JOSHI Signing Date:12.07.2022 17:55:52opines, the question as to whether the mark is descriptive or suggestive, can be based on the following tests:
a) Degree of imagination required to connect the mark with the product; and
b) The competitor's need to use the mark."
9. A ld. Single judge of the Bombay High Court in People Interactive (India) Private Limited v. Vivek Pahwa 2016 (68) PTC 225 (Bom) has summed up the test of distinctiveness in the following words:
"11. There are two issues here: first, the matter of acquisition of a 'secondary meaning'; and, second, whether a domain name always assumes the features of a trade mark. As to the first, in Indchemie - a decision that does not, in my view, support Mr. Khandekar at all - Gupte J referenced Miller Brewing Company v. G. Heileman Brewing Company Inc.3 and noted the 'spectrum' of degrees of distinctiveness: (1) generic or commonly descriptive; (2) merely descriptive; (3) suggestive; (4) arbitrary or fanciful. Generic or commonly descriptive words - examples such as 'necktie', 'plastic', 'soda', 'perfect', 'best', 'No. 1' come to mind - are used to name or describe the goods in question. These can never become trade marks on their own. They never acquire distinctiveness or a secondary meaning. They do not tell one man's goods from another's. They do not indicate origin. An expression in the second category, a merely descriptive term, is often used to describe some particular characteristic or ingredient: 'airtight', perhaps. Ordinarily, even these are not registrable unless they have acquired a secondary meaning and refer exclusively to one particular trader's goods. In the third category we have suggestive words. These only hint at a feature or a specialty. The consumer must, in his mind, make the necessary link between the word and the goods. This class of expression requires no proof of acquisition of a 3 561 F.2d 75.C.A.(COMM.IPD-TM) 133/2022 Page 6 of 8 Signature Not Verified Digitally Signed By:DEVANSHU JOSHI Signing Date:12.07.2022 17:55:52
secondary meaning to proceed to registration; it may, however, be hedged with a disclaimer regarding the manner of use. A wholly arbitrary or fanciful word is always registrable, and it always separates or distinguishes one person's goods from another's.
12. As a general rule, it seems to me that the principle is of obviousness. The degree of distinctiveness, and, therefore, the possibility of registration as a trade mark, is inversely proportional to the degree of obviousness: the more obvious the word, the less the degree of distinctiveness and the chances of its registration. I use the word 'obvious' here to mean not 'evident' but commonplace."
10. The general rule regarding distinctiveness is that a mark is capable of being protected if either it is inherently distinctive or has acquired distinctiveness through secondary meaning. In the spectrum of distinctiveness, the first category of marks is of arbitrary, fanciful and invented marks which is of absolute distinctiveness. Similarly, suggestive marks can also be registered due to their inherent distinctiveness. Descriptive marks can be registered as trademarks provided secondary meaning is established. Insofar as descriptive marks are concerned, just because some portion of the mark may have some reference or indication as to the products or services intended for, the same may not be liable to be rejected straightaway. In such a case, the merits of the marks would have to be considered along with the extent of usage. Other registrations of the applicant would also have a bearing on the capability of the mark obtaining registration. The owner of a mark is always entitled to expand the goods and services, as a natural consequence in expansion of business.
11. The test which is applied by the ld. Senior Examiner in the impugned order is not in consonance with the settled legal position set out above. The C.A.(COMM.IPD-TM) 133/2022 Page 7 of 8 Signature Not Verified Digitally Signed By:DEVANSHU JOSHI Signing Date:12.07.2022 17:55:52 spectrum of distinctiveness has to be considered while examining the applications which come up for registration before the Trade Mark Registry.
12. In the present case, the mark 'HEALTHSKOOL' has been in use by the Appellant since 2015. The same is also the subject matter of several registered marks in various classes in favour of the Appellant both in logo form and word form. The Appellant's sales are to the tune of approximately Rs.23 crores in 2020-21. The Appellant has further submitted before the Court that it does wishes to claim any exclusive rights in the word 'health' per se. In the opinion of the Court, at this stage, the mark is distinctive enough to proceed for advertisement.
13. Under these circumstances and in view of the settled legal position, the impugned order is not sustainable. The same is, accordingly, set aside. The application of the Appellant shall proceed for advertisement in the trademark journal with the condition 'No exclusive rights in the word `Health'.
14. The Registrar of Trademarks is directed to advertise the mark within the next two months. It is, however, clarified that the present order shall not bind any opposition proceedings, if instituted by any third party.
15. The appeal is allowed in the above terms. All pending applications are disposed of.
16. The present order be communicated to the Trade Marks Registry for compliance though Mr. Harish Vaidyanathan, ld. CGSC.
PRATHIBA M. SINGH JUDGE JULY 8, 2022/dj/sk C.A.(COMM.IPD-TM) 133/2022 Page 8 of 8 Signature Not Verified Digitally Signed By:DEVANSHU JOSHI Signing Date:12.07.2022 17:55:52