Delhi High Court - Orders
Kentucky Fried Chicken International ... vs The Registrar Of Trade Marks on 7 February, 2023
Author: Sanjeev Narula
Bench: Sanjeev Narula
$~2
* IN THE HIGH COURT OF DELHI AT NEW DELHI
+ C.A.(COMM.IPD-TM) 56/2022
KENTUCKY FRIED CHICKEN
INTERNATIONAL HOLDINGS LLC ..... Appellant
Through: Mr. Prithvi Singh and Mr. Rohan
Krishna Seth, 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 Paaikaday,
Advocates.
CORAM:
HON'BLE MR. JUSTICE SANJEEV NARULA
ORDER
% 07.02.2023
1. The present appeal under Section 91 of the Trade Marks Act, 1999, [hereinafter "the Act"] impugns order dated 24th December, 2018, read with Statement of Grounds of decision dated 31st December, 2018, both passed by Senior Examiner of Trademarks, whereby Appellant's application No. 2747482 for the mark "CHICKEN ZINGER" in class 29, has been refused. Relevant portion of the Statement of Grounds of decision reads as under:
"With reference to the above and request on Form TM-M dated 26/12/2018. 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. NIKHIL APPEARED.ARGUED/MADE SUBMISSION, HEARD Signature Not Verified Digitally Signed C.A.(COMM.IPD-TM) 56/2022 Page 1 of 4 By:SAPNA SETHI Signing Date:10.02.2023 15:06:34 CHECKED APPLICATION, REPLY TO EXAMINATION REPORT. IT APPEARED THAT.MARK HAS DIRECT REFERENCE TO THE GOODS. THE USER AFFIDAVIT ALONG WITH EVIDENCE (LIKEWISE; INVOICES, PUBLISHING MATERIAL) IN SUPPORT DOES NOT FILED, FURTHERMORE MARK IS NOT DISTINCTIVE BUT DESCRIPTIVE IN NATURE SO OBJ.U/S 9 SUSTAIN.HENCE REFUSED.
* 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."
2. Holding the mark "CHICKEN ZINGER" to be descriptive of characteristics of the goods or services to which it is applied, Senior Examiner has refused its registration under Section 9(1)(b) of the Act.
3. The Court has heard the counsel. Appellant has several registrations in its favour, which have been listed in the appeal as follows:
Trademark Application Application Date Class Status No. ZINGER 579523 August 19, 1992 29 Registered ZINGER 1592639 May 29, 2008 30 Registered 1999359 July 27, 2010 29 Registered 2000293 July 28, 2010 30 Registered 2106141 February 25, 2011 30 Registered HOT ZINGER 2106142 February 25, 2011 30 Registered CHICKEN 2747483 May 30, 2014 30 Registered ZINGER PANEER 2747484 May 30, 2014 29 Registered ZINGER PANEER 2747485 May 30, 2014 30 Registered ZINGER Signature Not Verified Digitally Signed C.A.(COMM.IPD-TM) 56/2022 Page 2 of 4 By:SAPNA SETHI Signing Date:10.02.2023 15:06:34 ZINGER 2811788 September 18, 2014 30 Registered FESTIVAL ZINGER 2811789 September 18, 2014 29 Registered FESTIVAL 2811790 September 18, 2014 30 Registered 2811791 September 18, 2014 29 Registered
4. At the time of filing of the appeal, status of application Nos. 2747483, 2747484 and 2747485 was "accepted and advertised", and current status, as mentioned above, is a subsequent development, during the pendency of the present appeal. Proof of current status from the website of Trademark Registry has been handed over and is taken on record.
5. Subject mark comprises of two words - "CHICKEN" and "ZINGER". The dictionary meaning of "ZINGER" is "a thing outstandingly good of its kind" or "a wisecrack; punch line" or "a surprise question; an unexpected turn of events".1 Use of "ZINGER" in conjunction with "CHICKEN" does not draw an instant connection with the kind of goods/ services and may at best, be considered suggestive. Further, Appellant holds registration of the word marks "ZINGER" and "PANEER ZINGER" in class 29 itself. Objection under Section 9(1)(b) of the Act seems to be based on the use of the word "CHICKEN", over which, Appellant cannot have any exclusivity and no such claim is being asserted. For the foregoing reasons, present appeal is allowed with following directions:
(i) Impugned order dated 24th December, 2018, read with Statement of 1 Zinger, Shorter Oxford English Dictionary, (5th edition, 2002).Signature Not Verified Digitally Signed C.A.(COMM.IPD-TM) 56/2022 Page 3 of 4 By:SAPNA SETHI Signing Date:10.02.2023 15:06:34
Grounds of decision dated 31st December, 2018 is set aside.
(ii) Trademark Registry is directed to proceed for advertisement of Application No. 2747482 for the mark "CHICKEN ZINGER" in class 29, within a period of three months from today.
(iii) If there is any opposition to the said application, the same shall be decided on its own merits uninfluenced by observations made hereinabove.
(iv) It is clarified that Appellant shall not have any exclusive rights in the word "CHICKEN". Trademarks Registry shall reflect this disclaimer at the time of advertisement of subject mark and also if subject mark ultimately proceeds for registration.
6. With the above directions, the appeal is disposed of.
7. Registry is directed to supply a copy of the present order to the Trademark Registry at [email protected] for compliance.
SANJEEV NARULA, J FEBRUARY 7, 2023 nk Signature Not Verified Digitally Signed C.A.(COMM.IPD-TM) 56/2022 Page 4 of 4 By:SAPNA SETHI Signing Date:10.02.2023 15:06:34