S And P Global Inc vs The Registrar Of Trademark on 17 April, 2023

[Cites 3, Cited by 0]

Delhi High Court - Orders

S And P Global Inc vs The Registrar Of Trademark on 17 April, 2023

1. Appellant - 'S&P Global Inc.' (formerly McGraw Hill Financial, Inc.) has filed the present appeal under Section 91 of the Trade Marks Act, 1999 [hereinafter "the Act"] impugning Refusal Order dated 28th December, 2018 read along with Statement of Grounds of decision dated 21st February, 2019, whereby Appellant's multi-class Trade Mark Application No. 2442103 for the word mark 'Essential Intelligence' under Classes-09, 16, 35, 36, 40 and 41 [hereinafter "subject mark"], has been refused [hereinafter collectively "Impugned Orders" and separately "Refusal Order" and "Statement of Grounds"]. Reasons disclosed in Statement of Grounds are as follows:

"With reference to the above and request on Form TM-M dated 25/01/2019. It has been decided by the Register of Trade Marks to inform you that hearing in respect of above application was held on 06/12/2018 and the said application is refused on the Signature Not Verified Digitally Signed C.A.(COMM.IPD-TM) 36/2022 Page 1 of 6 By:SAPNA SETHI Signing Date:24.04.2023 19:41:16 following Grounds;

* SEC 9/11 OBJECTION HENCE REFUSED. THE MARK IS LAUDATORY, OBJECTION UNDER SECTION 9(1)b OF THE ACT *9- Absolute grounds for refusal of registration. *9(1)(a)- The trade mark is 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:

*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.

SEC 9/11 OBJECTION HENCE REFUSED. THE MARK IS LAUDATORY, OBJECTION UNDER SECTION 9(1) OF THE ACT"

2. The Senior Examiner has objected to registration of the subject mark under Section 9 (1)(a) and (b) as well as Section 11 of the Act. He found the subject mark to be laudatory, however, in the opinion of the Court, the two English dictionary words 'Essential' and 'Intelligence', when used in conjunction with services rendered by the Appellant, do not directly describe a positive quality thereof. The phrase only hints or suggests the intended nature of the goods or services, without actually describing them. The phrase 'Essential Intelligence', at the highest, can be considered to be suggestive even though it has the potential of being commendatory. Further, an identical mark has been registered in favour of Appellant in several other jurisdictions including WIPO, United States of America, Singapore, Argentina, Canada, etc., details whereof are set out in paragraph No. VI

(i)(b) of the appeal.

3. Besides that, Appellant has also filed a user affidavit disclosing that subject mark has been in use in India since the year-2013 and has since acquired considerable reputation on account of its use. In view of the above, in the opinion of the Court, the objection under Section 9 (1)(a) and (b) of the Act is not sustained.

Signature Not Verified Digitally Signed C.A.(COMM.IPD-TM) 36/2022 Page 2 of 6 By:SAPNA SETHI Signing Date:24.04.2023 19:41:16

4. As regards objection under Section 11 of the Act, one needs to first take note of similar cited marks in the 'WORD MARK SEARCH REPORT' annexed to the Examination Report, which is extracted as under:

Signature Not Verified Digitally Signed C.A.(COMM.IPD-TM) 36/2022 Page 3 of 6 By:SAPNA SETHI Signing Date:24.04.2023 19:41:16 Signature Not Verified Digitally Signed C.A.(COMM.IPD-TM) 36/2022 Page 4 of 6

By:SAPNA SETHI Signing Date:24.04.2023 19:41:16

5. The current status of the aforenoted cited marks is given hereinbelow:

5.1. Cited mark at sl. no. 1 - Trade Mark Application No. 1186274 has since been removed.

5.2. Cited marks at sl. nos. 2, 3 and 9 - Trade Mark Application Nos.

1534825, 1534831, 1520774 are likely to be removed due to non-filing of renewal request within prescribe timelines.

5.3. Cited marks at sl. nos. 4, 6 to 8 and 10 - Trade Mark Application No. 2442103, under different classes, are marks of the Appellant itself. Apart from the above, cited device mark at sl. no. 5 i.e., Trade Mark Application No. 1639603 - ' ', prima facie, appears to be dissimilar when compared with the subject word mark - 'Essential Intelligence', as a whole. Thus, objection under Section 11 of the Act is also Signature Not Verified Digitally Signed C.A.(COMM.IPD-TM) 36/2022 Page 5 of 6 By:SAPNA SETHI Signing Date:24.04.2023 19:41:16 devoid of merit.

6. In view of the above, the present appeal is allowed with following directions:

6.1. Impugned Orders are set aside.

6.2. Trade Marks Registry is directed to process the registration application for the subject mark.

6.3. Subject mark be advertised within a period of three months from today.

6.4. If there is any opposition, the same shall be decided on its own merits, uninfluenced by observations made hereinabove. 6.5. The rights in subject mark shall be restricted to combination of words 'Essential' and 'Intelligence', as depicted above. 6.6. It is clarified the subject mark shall not grant any exclusive rights in the words 'Essential' or 'Intelligence,' separately or individually. This disclaimer/ condition and limitation, shall be reflected in the Trade Marks Journal at the time of advertisement if the subject mark ultimately proceeds for registration.

7. With the above directions, the appeal is disposed of along with pending application(s), if any.

8. Registry is directed to supply a copy of the present order to the Trade Marks Registry at [email protected] for compliance.

SANJEEV NARULA, J APRIL 17, 2023/d.negi (Corrected and released on: 24th April, 2023) Signature Not Verified Digitally Signed C.A.(COMM.IPD-TM) 36/2022 Page 6 of 6 By:SAPNA SETHI Signing Date:24.04.2023 19:41:16

Unlock Advanced Research with PRISMAI

Delhi High Court - Orders