Mvs Eduexcellence Pvt Ltd. vs The Registrar Oftrademarks, Delhi on 6 February, 2023

[Cites 6, Cited by 0]

Delhi High Court

Mvs Eduexcellence Pvt Ltd. vs The Registrar Oftrademarks, Delhi on 6 February, 2023

1. This appeal challenges order dated 13th January 2020, whereby Application No. 3018041, submitted by the appellant for registration of the mark "Indirapuram Public School" in Class 41 has been rejected by the learned Senior Examiner in the office of the Trade Marks Registry. The reasoning in the impugned order of the learned Senior Examiner reads as under:

"In the examination report, mark was clearly lacks distinctiveness and falls within the purview of Absolute ground of refusal so envisaged under Section 9(1)(a) of the Trade Mars Act, 1999 which is reproduced as under :-

9(1)(a) of the Trade Marks Act 19999 as the mark is a common surname/personal name/geographical name/ornamental or a non- distinctive geometrical figure and as such it is not capable of distinguishing the goods or services of one person from those of others.

Subsequently, a hearing was fixed in the matter on 19th March, 2019, eventually the Counsel for the applicant appeared on the said date for Signature Not Verified Digitally Signed C.A.(COMM.IPD-TM) 148/2022 Page 1 of 8 By:KAMLA RAWAT Signing Date:07.02.2023 15:20:02 Neutral Citation Number : 2023/DHC/000853 hearing and made his oral submissions in support the application. I have carefully perused the reply to examination report filed in the matter as well as electronically filed records and material available on the portal. I have also considered the oral submissions made at the time of hearing by the Ld. Counsel for the applicant in support of the registrability of the impugned mark.

Since the trade mark applied for registration is clearly lacks distinctiveness and descriptive to the nature and description of services, as applied for registration and the reply and documents placed on record are not sufficient to proceed the application further, hence, the mark cannot be allowed to proceed for registration, while considering the following.

Incapable of distinguishing the services of one person from the other; The trademark "INDIRAPURAM PUBLIC SCHOOL" is a common and generic combination of two English words "INDIRAPURAM and PUBLIC SCHOOL". The word INIDRAPURAM is indicated geographical place and PUBLIC SCHOOL is indicated of intended purpose of services and it does not carry any distinctive character; No one can acquire a monopoly or exclusive right;

It is pertinent and thus noteworthy that the impugned application has been filed claiming user of the mark since 15/04/2013, thus it was incumbent upon the applicant to prove said user through affidavit and documentary evidence, otherwise the application would be deemed to have been filed on the basis of wrong statement of use. Perusal of Examination report reply as well as documents filed on record, I have no hesitation to state that affidavit has been filed by the applicant which prove the user of the impugned mark since 15/04/2013, therefore Applicant has failed to comply with provision of Rule 25 of the Trade Marks Rules 2017 which reads as follows:

Rule 25 of Trade Marks Rules, 2017- Statement of user in applications - (1) An application to register a trademark shall, unless the trademark is proposed to be used, contain a statement of the period during which , and the person by whom it has been used in respect of all the goods or services mentioned in the application.

(2) In case, the use of the trademark is claimed prior to the date of application, the applicant shall file an affidavit testifying to such use along with supporting documents.

In the light of the above said provision and the observations made by the Hon'ble Delhi High Court in the judgments namely Vivek Kochher & Anr v M/s Kyk Corporation Ltd & Anr. Reported as PTC 2017 (72) page 556 and Suresh Kumar Jain Vs. Union of India Signature Not Verified Digitally Signed C.A.(COMM.IPD-TM) 148/2022 Page 2 of 8 By:KAMLA RAWAT Signing Date:07.02.2023 15:20:02 Neutral Citation Number : 2023/DHC/000853 reported as PTC 2012(49) page 287, whereby it was held by the Hon'ble High Court that if the a mark is filed/registered on the basis of wrong statement of use, then the same cannot be registered or remain on the Register. Such mark therefore ought not to be put on the Register which is essential for a Hearing Officer for the purposes of maintaining the purity of Register being acting on behalf of Registrar of Trade Marks who is custodian of Register of Trade Marks, as has been held by Hon'ble Supreme Court in Hardie Trading Ltd. and another v. Addisons paint & Chemicals Ltd., (2003) 11 SCC 92. And further in the matter of Inter lkea Systems BV & Anr versus Sham Murari &ors, reported as PTC 2018, the Hon'ble Delhi High Court observed that "While this Court does not wish to encourage any party, which misleads the trademark authorities".

In view of above, I am of the considered view that objections raised in the Examination reports cannot be waived and the Reply to the Examination report and documents filed as well as oral submission made are insufficient to grant registration of trade mark applied for registration, therefore not entitled for any benefit under Section 9(1) proviso of the Act. Hence objection under Section 9(1)(a) of the Act cannot be waived off. Also the mark cannot be allowed to be proceeded further while maintaining the purity of the register."

2. Consequent to submission of its application No. 3018041, seeking registration of the "Indirapuram Public School" mark, First Examination Report (FER) dated 12th May 2016 was issued from the office of the learned Registrar, raising, as the sole objection under Section 9(1)(a)1 of the Trade Marks Act, 1999, the contention that the mark, of which registration had been sought, was "a common surname/personal name/geographical name/ornamental or a non-distinctive geometrical 1

9. Absolute grounds for refusal of registration. -

                             (1)        The trade marks -
                                        (a)       which are 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;

(b) which consist exclusively of marks or indications which may 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 service;

(c) which consist exclusively of marks or indications which have become customary in the current language or in the bona fide and established practices of the trade, shall not be registered:

Provided that a trade mark shall not be refused registration if before the date of application for registration it has acquired a distinctive character as a result of the use made of it or is a well-known trade mark.

Signature Not Verified Digitally Signed C.A.(COMM.IPD-TM) 148/2022 Page 3 of 8 By:KAMLA RAWAT Signing Date:07.02.2023 15:20:02

Neutral Citation Number : 2023/DHC/000853 figure" which was "not capable of distinguishing the goods or services of one person from those of others".

3. The appellant replied to the aforesaid objections on 13th December 2016. It was asserted, in the reply, that the mark "Indirapuram Public School" had gained distinctiveness over a period of time by extensive use and was a source indicator for residents residing in the area. Following on the reputation gained by it, the reply asserted that further branches of the school had been opened at Crossing Republic and at Pratap Vihar, Ghaziabad. It was further asserted that over 2,600 students were enrolled in the school, which earned substantial income from the educational services rendered by it.

4. In these circumstances, it was asserted that the objection regarding non-distinctiveness, under Section 9(1)(a) of the Trade Marks Act was without substance and that, therefore, the mark was entitled to registered.

5. The aforesaid reply was accompanied by an affidavit dated 15th December 2016. A separate affidavit, by way of evidence, was also filed by the appellant, basically reiterating the contents of the aforesaid reply dated 13th December 2016.

6. Several documents were also filed by the appellant along with the aforesaid affidavit.

7. Mr. Anuj Kumar, learned Counsel for the appellant submits that the impugned order is patently erroneous, as it proceeds by bifurcating Signature Not Verified Digitally Signed C.A.(COMM.IPD-TM) 148/2022 Page 4 of 8 By:KAMLA RAWAT Signing Date:07.02.2023 15:20:02 Neutral Citation Number : 2023/DHC/000853 the mark of which registration was sought, into "Indirapuram" and "Public School" separately, and holds the mark to be lacking in distinctiveness on the ground that Indirapuram was the name of a geographical area and "Public School" merely indicated the nature of services rendered by the institution for which the application for registration had been submitted.

8. The mark "Indirapuram Public School" seen as a whole, submits Mr. Kumar, is clearly distinctive. He points out that there was no objection on the ground that any other institution had a deceptively similar name. He also points out that there are several similar marks which already stand registered such as Delhi Public School, Ghaziabad Public School Senior Secondary School, Mumbai Public School, Indore Public School and Chennai Public School.

9. Mr. Harish Vaidyanathan Shankar, learned Counsel for the respondent, fairly leaves this aspect to the Court. However, he points out that the impugned order also notes that the appellant had not provided evidence of user as required by Rule 272 of the Trade Marks Rules, 2017 ("the 2017 TM Rules"), though there appears to be a typographical error in the impugned order in that regard.

10. Rule 25(2) of the 2017 TM Rules, as it stands now, specifically requires the appellant to file an affidavit testifying to prior user of the mark of which registration was sought along with supporting documents.

27. Statement of user in applications.- An application to register a trade mark shall, unless the trade mark is proposed to be used, contain a statement of the period during which, and the person by whom it has been used in respect of the goods or services mentioned in the application. The Registrar may require the applicant to file an affidavit testifying to such user with exhibits showing the mark as used. "

Signature Not Verified Digitally Signed C.A.(COMM.IPD-TM) 148/2022 Page 5 of 8 By:KAMLA RAWAT Signing Date:07.02.2023 15:20:02

Neutral Citation Number : 2023/DHC/000853 Mr. Anuj Kumar submits that, at the time when the application for registration had been filed by his client, on 28th July 2015, the Rule 25(2) of the Trade Marks Rules, 2017 had yet to come into force and that Rule 273 of the then existing Trade Marks Rules, 2002 ("the 2002 TM Rules") then in force, did not require, mandatorily, filing of an affidavit of user, but clothed the Registrar with the discretion (as is apparent from the use of the word "may") to require the applicant to file an affidavit of user with supportive exhibits.

11. Mr. Vaidyanathan, learned Counsel for the respondent submits that, however, as the evidence in affidavit was filed by the appellant after 2017, the appellant ought to have placed evidence of prior user on record.

12. Given the fact that the application was filed prior to the requirement of affidavit of user along with supportive evidence being placed on record, where prior user was claimed, I am inclined to agree with Mr. Anuj Kumar that the appellant cannot be faulted for not having filed such an affidavit with evidence of user. It is trite that an application or petition would be governed by the procedure, or format, applicable at the time when it is filed, and that subsequent changes in procedure or format introducing during the pendency of the application would not affect it. Besides, Rule 1584 of the 2017 TM Rules saves acts done under the 2002 TM Rules before the 2017 TM Rules came into force. This itself is a complete answer to Mr. Vaidyanathan's submission.

27. Statement of user in applications. - An application to register a trade mark shall, unless the trade mark is proposed to be used, contain a statement of the period during which, and the person by whom it has been used in respect of the goods or services mentioned in the application. The Registrar may require the applicant to file an affidavit testifying to such user with exhibits showing the mark as used.

158. The Trade Marks Rules, 2002, are hereby repealed without prejudice to anything done under such rules before the coming into force of these rules.

Signature Not Verified Digitally Signed C.A.(COMM.IPD-TM) 148/2022 Page 6 of 8 By:KAMLA RAWAT Signing Date:07.02.2023 15:20:02

Neutral Citation Number : 2023/DHC/000853

13. Be that as it may, this Court, vide its order dated 9th September 2022, permitted the appellant to place user documents on record. The appellant has thereafter, filed, under index dated 29th October 2022, a list of the documents which, according to the appellant, evidence prior user, by the appellant, of the "Indirapuram Public School" word mark since 2014, being the claim of user submitted before the learned Registrar.

14. It would be appropriate that the claim of prior user by the appellant, predicated on the aforesaid documents, be considered in the first instance by the learned Registrar, as it primarily involves examination into facts.

15. The impugned order, insofar as it rejects the appellant's application under Section 9(1)(a) of the Trade Marks Act, on the ground that the "Indirapuram Public School" mark is lacking indistinctiveness is, however, not sustainable on facts or in law.

16. As such, the impugned order dated 13th January 2020 is quashed and set aside. Application No. 3018041 filed by the appellant shall stand remanded for reconsideration by the learned Registrar or by any officer deputed by the learned Registrar for the said purpose, solely on the aspect of user as claimed by the appellant since 2014. The appellant would file a fresh affidavit of user before the learned Registrar. The learned Registrar would examine the claim of user of the appellant on the basis of the said affidavit along with the documents already filed before the learned Registrar as well as the documents filed before this Court under cover of index dated 29th October 2022, which the appellant is permitted to Signature Not Verified Digitally Signed C.A.(COMM.IPD-TM) 148/2022 Page 7 of 8 By:KAMLA RAWAT Signing Date:07.02.2023 15:20:02 Neutral Citation Number : 2023/DHC/000853 present before the learned Registrar for the said purpose.

17. The appellant would also be granted an opportunity of hearing before any decision is taken. For the said purpose, let the appellant present itself before the learned Registrar on 21st February 2023.

18. The learned Registrar (or other officer deputed by him) is directed to decide the appellant's application as expeditiously as possible, preferably within a period of four weeks therefrom.

19. The appeal stands allowed to the aforesaid extent with no order as to costs.

20. Judgment to be uploaded on the website of this Court within 24 hours.

C. HARI SHANKAR, J FEBRUARY 6, 2023 AR Signature Not Verified Digitally Signed C.A.(COMM.IPD-TM) 148/2022 Page 8 of 8 By:KAMLA RAWAT Signing Date:07.02.2023 15:20:02

Unlock Advanced Research with PRISMAI

Delhi High Court