Indian Kanoon - Search engine for Indian Law

i. Whether the Subject Mark is generic and descriptive in nature? ii. Whether the Subject Mark has acquired distinctiveness? iii. Whether the Subject Mark is common to the trade or publici juris?

iv. Whether the Plaintiff is a pirator and a subsequent user of the Subject Mark?

Whether the Subject Mark is generic and descriptive in nature?

12. The Plaintiff has contended that the Subject Mark is not generic or descriptive as the general meaning of the word 'DUNIYADARI' is 'Worldliness', 'Worldly Affairs' and 'The Ways of the World'. However, these meanings do not describe the news programme being aired by the Plaintiff.

13. A common or generic term according to Section 9 of the Trade Marks Act means 'commonly used word in local language, which describes qualities of goods or services and words customary in trade practices'. As the Mark 'DUNIYADARI' does not describe the nature of services rendered by the Plaintiff i.e., world news it requires a viewer to make an intellectual leap from 'Worldliness' to 'World News' to make the Subject Mark generic or descriptive. The Cambridge dictionary describes the word 'Worldliness' as the quality of being practical and having a lot of experience of life. The Mark 'DUNIYADARI' is at best suggestive as it is a unique Mark that does not explicitly say or identify good or service but rather makes reference to certain aspects of it. In Himalaya Drug (supra), Umang Dairies (supra) and Rajni Gupta (supra) it is held that the suggestive marks are capable of being registered. The Plaintiff's programme does not show 'World Philosophies', 'Worldly Experiences', 'Material Values' or 'Ordinary Life', but only 'World News', which is not translated to 'DUNIYADARI'.

14. The Defendant, however, has contended that the term 'DUNIYADARI' is a common word used in Hindi, Marathi and Punjabi and forms part of everyday vocabulary and is incapable of acquiring any distinctiveness. Being descriptive and generic, it cannot be monopolized by any single entity or person. The Defendant is protected under Sections 30(1) and 30(2)(a) of the Trade Marks Act, which is clearly an exception to Section 29 of the Trade Marks Act. The generic and descriptive terms cannot function as trade marks without distinctiveness as held in Biswaroop Roy Choudahary (supra), TV 18 Broadcast (supra), Yatra Online (supra), Wow Momo (supra), Living Media (supra), Marico Limited (supra), Pernod Ricard (supra) and IHHR Hospitality (supra).