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M/S Ilu A Sole Proprietorship Concern Of ... vs Asian Hobby Crafts Llp And Anr on 14 November, 2024

Author: Amit Bansal

Bench: Amit Bansal

                          $~6
                          *     IN THE HIGH COURT OF DELHI AT NEW DELHI
                          %                                  Date of decision: 14th November, 2024

                          +     C.O. (COMM.IPD-TM) 699/2022
                                M/S ILU A SOLE PROPRIETORSHIP CONCERN OF MRS
                                VIDUSHI CHAWLA                            .....Petitioner
                                               Through: Ms. Megha Mukerjee, Mr. Akshay
                                                        Ringe and Mr. Dhananjay Gupta,
                                                        Advocates
                                               versus

                                ASIAN HOBBY CRAFTS LLP AND ANR                            .....Respondents
                                             Through: None


                          CORAM:
                          HON'BLE MR. JUSTICE AMIT BANSAL
                          AMIT BANSAL, J. (ORAL)

1. The present rectification petition has been filed seeking cancellation/removal of the trademark bearing registration number 4453168 in Class 20, granted in favour of Respondent No.1/ Asian Hobby Crafts LLP for the mark, "DREAMCATCHER".

BRIEF FACTS

2. The case set up by the Petitioner is as follows:

2.1 The Petitioner company is engaged inter-alia, in the business of the sale of decorative items such as wind chimes, dreamcatchers, etc on the internet through the website, Amazon.

2.2 On 27th November 2020, the Petitioner received an email communication from Amazon, whereby it was stated that one of the products Signature Not Verified C.O. (COMM.IPD-TM) 699/2022 Page 1 of 4 Digitally Signed By:PREETI Signing Date:27.11.2024 16:31:38 being sold by the Petitioner i.e., "DREAMCATCHER", infringes one trademark registration bearing number 4453168. In light of the same, Amazon deactivated the listings of the Petitioner from its website. 2.3 Upon enquiries being made, it came to the knowledge of the Petitioner that the aforesaid trademark "DREAMCATCHER" bearing number 4453168, has been registered in favour of Respondent No.1/Asian Hobby Crafts LLP under Class 20 by the Trade Marks Registry vide certificate dated 17th October 2020.

2.4 Aggrieved by the aforesaid registration, the present petition came to be filed.

PROCEEDINGS IN THE PETITION

3. On 21st December 2020, when the petition was listed before the erstwhile Intellectual Property Appellate Board (IPAB), Respondent No.1 stated that they had no objection if the Petitioner continued to use the mark "DREAMCATCHER". Therefore, interim relief was granted in favour of the Petitioner i.e., M/S ILU that the Petitioner could continue selling its products on Amazon and other platforms, till the final adjudication of the petition.

4. Subsequently, vide a government notification dated 22nd April, 2021 being Notification No. F. No. P-24017/28/2021-IPR-I, the IPAB was dissolved and it was mandated that all pending appeals and other matters before the IPAB would be transferred to the concerned High Court.

5. Consequently, this petition was listed before this Court. Notice was issued by this Court in this petition vide order dated 26th July 2022.

6. Subsequently, vide order dated 6th November, 2023, Respondent No.1 has been proceeded against ex-parte.

7. Written submissions have been filed on behalf of the Petitioner.

8. Ms. Megha Mukerjee, counsel appearing on behalf of the Petitioner submits that the mark "DREAMCATCHER" is the name of a decorative product which is sold throughout the world by the same name. Therefore, no trademark could have been granted in respect of the aforesaid mark in terms of Section 9 of the Trade Marks Act, 1999.

ANALYSIS AND FINDINGS

9. I have heard the counsel for the petitioners and examined the record of the case.

10. Under Section 9(1)1 of the Trade Marks Act, 1999, there exists an absolute bar on the registration of a trademark which is devoid of any distinctive characteristic and serves solely to designate the kind or intended purpose of the goods in trade.

11. Learned counsel appearing on behalf of the Petitioner submits that the word "DREAMCATCHER" has been defined in the Cambridge English Dictionary in the following manner:

"A decorative object consisting of a ring with a net of string across it and feathers, etc. handing from it, originally made by Native Americans, and thought to bring its owner good dreams:

Section 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.

12. What emerges from the above is that the word "DREAMCATCHER" is the name of a decorative product which is widely recognised throughout the world as such.

13. It is a settled position of law that no one can claim exclusive rights over generic and/or descriptive terms of words which define a product, in a manner that a complete monopoly is created in favour of one person to use the word and exploit the word to the exclusion of others. [See Panacea Biotec Ltd. v. Recon Ltd. 1996 SCC OnLine Del 508, Geep Flashlight Industries Ltd. v The Registrar of Trade Marks, 1971 SCC OnLine Del 340 and M/s. Hindusthan Development Corporation Ltd v. The Deputy Registrar of Trade marks, 1954 SCC OnLine Cal 228]

14. In view of the discussion above, in my considered view, the registration granted to Respondent No.1 in respect of the mark "DREAMCATCHER" is contrary to the bar contained in Section 9(1) of the Trade Marks Act, 1999.

15. Accordingly, the present petition is allowed and the impugned trademark registration under the trademark application no. 4453168 in the name of Respondent No.1 in Class 20 is removed from the Register of Trade Marks.

16. A copy of the order be sent to the Respondents through e-mail. The Registry is directed to supply a copy of the present order to the Trademark Registry, at e-mail - "[email protected]" for compliance.

AMIT BANSAL, J NOVEMBER 14 , 2024 Signature Not Verified C.O. (COMM.IPD-TM) 699/2022 Page 4 of 4 Digitally Signed By:PREETI Signing Date:27.11.2024 16:31:38