Madras High Court
Swasth Digital Health Foundation Of ... vs Trade Marks Registry on 15 March, 2024
Author: N.Seshasayee
Bench: N.Seshasayee
CMA(TM) No.10 of 2023
IN THE HIGH COURT OF JUDICATURE AT MADRAS
Reserved on : 11.01.2024
Pronounced on : 15.03.2024
CORAM : JUSTICE N.SESHASAYEE
CMA(TM) No.10 of 2023
Swasth Digital Health Foundation of No.881
6th Cross, Koramangala Club Road
6th Block, Koramangala
Bangalore, Karnataka - 560 095.
Represented by its Authorised Signatory ... Appellant
Vs
Trade Marks Registry
Intellectual Property Building
GST Road, Guindy
Chennai - 600 032. ... Respondent
PRAYER : Appeal filed under Section 91 of the Trade Marks Act, 1999
praying to set aside the impugned order dated 06.07.2023 passed by the
learned Registrar of Trade Marks.
For Appellant : Mr.Bharadwaj Jaishankar
For Respondent : Ms.P.J.Anitha
Central Government Standing Counsel
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https://www.mhc.tn.gov.in/judis
CMA(TM) No.10 of 2023
JUDGMENT
The present appeal is preferred under Section 91 of the Trade Marks Act, 1999, challenging an order the respondent dated 06.07.2023 under which the application for registration of trade mark, dated 07.07.2020, was refused.
2. The appellant introduces itself as a non-profit institution to provide a certain technology driven health care support to the citizens of this country. It further claims that it came with an idea certain service model during COVID wave-I. The service model of the appellant involves a collaborative alliance with several health care institutions and medical companies and organisations as well as insurance companies, which enables accessing them a mobile application that it has developed. It is a sort of an interface between the one who seeks health care support and those institutions which provide it. This Court is informed that for the services it renders, the appellant does not charge the users of its mobile-app.
3. The appellant claims that it has developed a trade mark as shown below to provide distinctiveness to its service:
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https://www.mhc.tn.gov.in/judis CMA(TM) No.10 of 2023 Both the word and the backdrop of the logo are in a darker shade of blue.
The horizontal arm of the Plus is in white colour, and it appears to constitute the middle 1/3 of the vertical arm of the plus, with the top 1/3 of the vertical arm appears in saffron, and the bottom 1/3 is in green. The appellant claims that it began using this mark from 20.04.2020.
4. The trade mark was examined by the respondent, and it raised its objection under Sec.9(1)(b), and also under Sec.11(1) of the Trade Marks Act, and communicated the same to the appellant vide its notice dated 12.08.2020. It reads as below :
1. The objection is raised under S.9(1)(a) of the Trade Marks Act 1999, as the mark is a geographical name/ornamental as such it is not capable of distinguishing the goods or services of one person from those of others. The objection is raised under S.9(1)(b) of the Trade Marks Act 1999, as the mark consists exclusively of words of indications which may serve in trade to designate the intended purpose of the goods or rendering of the service or other characteristics of the goods or service.
2. The Trade Mark application is open to objection on relative 3/8 https://www.mhc.tn.gov.in/judis CMA(TM) No.10 of 2023 grounds of refusal under Section 11 of the Act because the same/similar trade marks(s) is/are already on record of the register for the same or similar goods/services...
The objection is raised under S 11(1) of the Trade Marks Act, 1999, as the mark is identical with or similar to earlier marks in respect of identical or similar description of goods or services and because of such identity or similarity there exists a likelihood of confusion on the part of the public. The respondent would then require the appellant to provide a fresh label without cross and the colours of the national flag. This is now under challenge.
5. The learned counsel for the appellant made pointed submissions :
a) that the petitioner has applied for one composite mark comprising a word, device or label with a colour scheme, and they are adequate to distinguish it from the goods and services of any other, either in the same class of goods and services or in different class of goods and services. The respondent however, has dissected a composite mark into word, colour, device microscopically.
b) so far as the objection that the vertical arm of the design 'Plus' in the device has all the colours of the national flag is concerned, 4/8 https://www.mhc.tn.gov.in/judis CMA(TM) No.10 of 2023 there is no intent to dishonour the national flag which alone is objectionable under the scheme of the Trade Marks Act.
The learned counsel then proceeded to bring to the notice of the court the tri- colour in the national flag as forming part of the device of many registered trade marks.
6. The learned counsel for the respondent submits that the objection is only with regard to the vertical line in the device, which is of the same colour as the national Flag.
7.1 This Court considers that the objection raised by the Trademark Registry is plainly untenable. The mark, taken as a whole, presents itself as a composite mark – comprising both a device and the word, and taken together it does exhibit a definite element of distinctiveness about it, and hence the Trademark Registry cannot refuse to register it. 7.2 The second part pertains to the sign 'plus' which forms part of the device. Here the objection is that the vertical arm of the sign has the tricolour and hence it does not qualify for being registered under the Act. What if the applicant had applied for the mark without limitation on the 5/8 https://www.mhc.tn.gov.in/judis CMA(TM) No.10 of 2023 colour scheme as provided under Sec.10(2) of the Act? If it had been done, then post its registration the petitioner as the owner of the mark has the freedom to choose the colour scheme of its choice later, which may include the colours of our national flag. Saffron, white and green are merely colours, and they existed even before they were adopted in our national flag. An applicant has the right to choose the colours of its choice, for the Trades Marks Act does not impose any restriction in the freedom of the owner of a mark to choose his/her/its favoured colours. Therefore, that which the Act has not restricted, the authority functioning under it cannot restrict. Plainly the Registrar of the Trade mark does not have the authority to impose restriction on the choice of the colours, and here he has over-stepped the statutory-line. And, even if the it is considered as resembling the national flag, does it anywhere seen denigrating its honour?
8. In conclusion, this appeal is allowed, and the order of the respondent dated 06.07.2023 is hereby set aside, and the respondent is directed to register the appellant's trade mark forthwith, subject to other statutory compliance. No costs.
15.03.2024 Index : Yes / No Speaking order / Non-speaking order 6/8 https://www.mhc.tn.gov.in/judis CMA(TM) No.10 of 2023 ds To:
The Trade Marks Registry Intellectual Property Building GST Road, Guindy Chennai - 600 032 7/8 https://www.mhc.tn.gov.in/judis CMA(TM) No.10 of 2023 N.SESHASAYEE.J., ds Pre-delivery Judgment in CMA(TM) No.10 of 2023 15.03.2024 8/8 https://www.mhc.tn.gov.in/judis