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Delhi High Court

Nri Taxi Service Pvt. Ltd. vs Registrar Of Trade Marks , Delhi on 25 January, 2023

Author: Amit Bansal

Bench: Amit Bansal

                              2023/DHC/000578




*       IN THE HIGH COURT OF DELHI AT NEW DELHI
%                                           Date of decision: 25th January, 2023.

+                            C.A.(COMM.IPD-TM) 114/2022

        NRI TAXI SERVICE PVT. LTD.                 ..... Appellant
                      Through: Dr. Amit George with Mr. Rishabh
                                Dheer and Ms. Manmeet Kaur
                                Sareen, Advocates.

                                 versus

        REGISTRAR OF TRADE MARKS, DELHI        ..... Respondent
                      Through: Mr. Harish Vaidyanathan Shankar,
                               CGSC with Mr. Srish Kumar Mishra,
                               Mr.    Sagar     Mehlawat       and
                               Mr.Alexander Mathai Paikaday,
                               Advocates.

CORAM:
HON'BLE MR. JUSTICE AMIT BANSAL
                                          JUDGMENT

AMIT BANSAL, J. (Oral) I.A. 6209/2022 (for exemption)

1. Subject to the appellant filing the original/certified/translated copies of any documents on which the appellant may seek to place reliance, within four weeks from today, exemption is granted for the present.

2. The application is disposed of.

C.A.(COMM.IPD-TM) 114/2022

3. The present appeal filed by the appellant under Section 91 of the Trade Marks Act, 1999 impugns the order dated 5th August, 2020 passed by Signature Not Verified Signed By:SAKSHI RAMOLA Signing Date:01.26.2023 C.A.(COMM.IPD-TM) 114/2022 21:41:13 Page 1 of 5 2023/DHC/000578 the Senior Examiner of Trade Marks, Delhi whereby the trademark application of the applicant bearing no.3547956 for registration of the device mark ' ' (hereinafter 'subject trademark') in Class 39 has been rejected on the ground that the subject trademark is laudatory and objectionable in terms of Section 9(1)(b) of the Trade Marks Act, 1999 (hereinafter referred to as 'the Act').

4. The details of the appellant's trade mark application are as under:

Mark Application Application Class Applicant no. Date 3547956 12.05.2017 39 NRI TAXI SERVICE PRIVATE LIMITED BRIEF FACTS

5. Brief facts necessary for deciding the present appeal are as follows:

i. On 12th May, 2017, the appellant filed a trademark registration application for registration of the subject trademark in class 39. ii. On 21st June, 2017, an Examination Report was sent by the Trademark Registry raising objection under Section 9(1)(b) of the Act.

iii. On 13th July, 2017, the appellant filed a reply to the aforesaid Examination Report giving detailed submissions stating that, inter Signature Not Verified Signed By:SAKSHI RAMOLA Signing Date:01.26.2023 C.A.(COMM.IPD-TM) 114/2022 21:41:13 Page 2 of 5 2023/DHC/000578 alia, the subject trademark is a unique combination of words and is therefore, distinctive.

iv. It was further stated that exclusivity was being claimed on the subject trademark as a whole and no exclusive proprietorship was being claimed on any of the descriptive elements of the mark. v. On 5th October, 2019, a hearing notice was sent to the appellant and the hearing took place on 4th December, 2019. On 29th November, 2019, the appellant filed additional documents for the hearing. vi. Vide impugned order dated 5th August, 2020, the appellant's application for registration of the subject trademark was rejected.

6. Counsel appearing on behalf of the appellant submits that the subject trademark cannot by any stretch of imagination be termed as laudatory. He places reliance on the judgment of the Division Bench in Mohd. Rafiq v. Modi Sugar Mills Ltd., 1971 SCC OnLine Del 190.

ANALYSIS AND FINDINGS

7. I have heard the counsels for the parties and perused the record.

8. I am in agreement with the submission of the appellant that there is nothing laudatory about the subject trademark. In any event, no reasons or justifications have been given in the impugned order as to how the aforesaid trademark amounts to being laudatory.

9. Counsel for the appellant has correctly placed reliance on the judgment in Mohd. Rafiq (supra), the relevant observations of which are set out below:

"We are unable to accede to the contention that the word "SUN"

used in respect of the lanterns manufactured by the respondent is a laudatory term having reference to the character and quality of those Signature Not Verified Signed By:SAKSHI RAMOLA Signing Date:01.26.2023 C.A.(COMM.IPD-TM) 114/2022 21:41:13 Page 3 of 5 2023/DHC/000578 lanterns. It is no doubt true that the rays of sun dispel darkness and lanterns too are used for dispelling darkness, it does not follow from that that the use of trade mark "SUN" for the lanterns has reference to the character and quality, of those lanterns. The reference to the character and quality, in our opinion, should be direct and plain and not remote and far-fetched. Likewise, the word, which is sought to be construed as laudatory, should have obvious significant of praise, and not one out of which an inference of praise has to be spelt out by a laboured process. Sun is the body which is the gravitational centre and source of light and heat to our planetary system. The element of praise is neither self evident in the word "SUN" nor can the said word be considered to be descriptive of the character or quality of the lanterns. A contrary view must necessarily result in stretching the connotation of the word "sun" to limits which, in our opinion, are impermissible. We, therefore, find it difficult to hold that the word "sun" is inherently incapable of being distinctive of the lanterns manufactured by the respondent. In the matter of The Eastmen Photographic Materials Company, Limited and The Comptroller- General of Patents, Designs and Trade Marks, 1898 A.C. 571 (5), the House of Lords held that the word "Solio" when used in respect of photographic paper was capable of registration as a trade mark. The contention that the word indicated the character or quality of the goods was repelled."

10. The subject trademark in the present case is a device mark, which is sought to be registered as a whole. The subject trademark is not a word mark simpliciter but a stylized device containing the text 'NRI Taxi' overlayed on a blue background with a partial outline of a side profile of a car. The same is required to be assessed as a whole. Further, the subject trademark is neither descriptive nor generic in respect of the services it is being used for.

11. In view of the above, the impugned order dated 5th August, 2022 refusing registration of the Trademark Application No.3547956 is unsustainable and is accordingly, set aside.

2023/DHC/000578

12. The appellant has already given his disclaimer with regard to using the individual components of the subject trademark. The appellant will not claim any rights over the individual components of the trademark i.e., 'NRI' and 'TAXI'.

13. The Registrar of Trade Marks is accordingly directed to proceed for registration of the application. Let the same be advertised within a period of three months.

14. If there is any opposition to the said application, the same shall be decided on its own merits without being affected by the observations made herein.

15. Accordingly, the appeal along with all pending applications is disposed of.

16. Registry to supply a copy of the present order to Trade Mark Registry at [email protected] for compliance.

AMIT BANSAL, J.

JANUARY 25, 2023 at Signature Not Verified Signed By:SAKSHI RAMOLA Signing Date:01.26.2023 C.A.(COMM.IPD-TM) 114/2022 21:41:13 Page 5 of 5