Delhi High Court - Orders
Indian Oncology Foundation vs The Registrar Of Trademarks on 14 January, 2022
Author: Sanjeev Narula
Bench: Sanjeev Narula
$~15
* IN THE HIGH COURT OF DELHI AT NEW DELHI
+ C.A.(COMM.IPD-TM) 6/2022 & I.As. 701-02/2022
INDIAN ONCOLOGY FOUNDATION ..... Appellant
Through: Mr. Gaurav Barathi, Ms. Muskan
Arora and Mr. Kartik Bhagat,
Advocates.
versus
THE REGISTRAR OF TRADEMARKS ..... Respondent
Through: None.
CORAM:
HON'BLE MR. JUSTICE SANJEEV NARULA
ORDER
% 14.01.2022
[VIA VIDEO CONFERENCING]
1. The present appeal filed under Section 91 of the Trade Marks Act, 1999 [hereinafter "the Act"] as amended by the Tribunals Reforms Act, 2021 impugns the Order dated 09th February, 2021 passed by the Senior Examiner of Trade Marks, rejecting Appellant's Trade Mark Application No. 3663829.
2. The Appellant viz. Indian Oncology Foundation claims to be Non-Profit Public Charitable Trust, dedicated to cancer management. They filed an application for registration of Trade mark viz. "Indian Oncology Foundation" in Class 45 on 26th October, 2017. Along with the application, the Appellant filed a User Affidavit claiming use of the subject mark by the Appellant and its predecessor-in-title since 14th March, 2007 in respect of Signature Not Verified Digitally Signed C.A.(COMM.IPD-TM) 6/2022 Page 1 of 6 By:AKANSHA SINGH Signing Date:25.01.2022 12:21:23 goods and services mentioned in the application. The application was duly examined, and an examination report dated 10th November, 2017 was issued by the Registry. Appellant submitted its response to the objection(s) raised therein, on 15th February, 2018. Hearing was granted on 01st February, 2021 and thereafter, the trade mark application was rejected under Section 9(1)(a) and 9(1)(b) of the Act vide Order dated 09th February, 2021.
3. Relevant portion of the impugned Order dated 09th February, 2021 reads as under: -
" The mark applied for registration is objectionable under S 9(1)(a) of the Trade Marks Act 1999, as it 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 The mark applied for registration is objectionable under S 9(1)(b) of the Trade Marks Act 1999,as it consists of 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.
Adv. gaurav barathi submitted that the subject mark i.e. Indian Oncology Foundation is a coined and fanciful mark that has no meaning and there is no direct reference to the character or the quality of the services Due to an uninterrupted, constant and widespread use, the applicant's trademark has acquired immense recognition, reputation and fame Members of public identify the subject trademark not only as a benchmark of excellence and quality but also distinctive, specifically of the applicant's only and owing to its long-term usage since 2007 and widespread presence the subject mark has acquired distinctiveness and secondary meaning People recognize subject mark and associate the trademark with the applicant exclusively and and principal of entirety of trademark must be considered Heard examine the application, documents and reply to the examination report reply not satisfactory The subject mark Indian Oncology Foundation applied for the services of Personal and social services rendered by others to meet the needs of individuals is not inherently distinctive The mark has direct reference to the quality and characteristics of the applied services hence descriptive as well as not distinctive for the applied services It is well settled law that no one can claim any exclusive right over the descriptive as well as generic word until or unless the mark has acquired distinctiveness by long and continues commercial use Moreover in the user affidavit the applicant did not disclose the Signature Not Verified Digitally Signed C.A.(COMM.IPD-TM) 6/2022 Page 2 of 6 By:AKANSHA SINGH Signing Date:25.01.2022 12:21:23 advertisement and promotional expenditure, share value of the mark, territory of the use of mark in order to acquire distinctiveness and no relevant supporting documents filed to substantiate the user claimed for the applied services The applicant/attorney have filed copy of trust deed, copy of PAN number, invoices of purchasing goods and services bills i.e. laptop, food bills and transportation bills etc. balance sheet and profit and lose accounts in the name of subject mark Some of the documents does not bear the date Furthermore it is well settled law that Use itself does not equal to distinctiveness Furthermore it is also well settled law that mere combination of two known words or abbreviation thereof, would not be an invented word even though the combination may not have been in use before if to the eye or ear the same idea would be conveyed as by the word in its ordinary form furthermore Supreme Court in the case of Anwar PV v PK Basheer and Others held conclusively that documentary evidence in the form of an electronic record can be proved only in accordance with the procedure set out under Section 65B of the Evidence act Furthermore Supreme Court in Cadila Health Care Ltd. v. Cadila Pharmaceuticals Ltd. Held that there is a possibility of confusion over marks on medicinal goods or services because the potential harm may be far more dire than that in confusion over ordinary consumer products In the said decision it was pointed out that even doctors are not immune from mistakes even if it was a Schedule L product which had to be prescribed hence objection maintained hence application refused undersection 9 (1) (a) and (b) of the act.
After perusal of all the documents on record and submission made by the applicant /authorised agent it is concluded that applied mark is not registrable because of the reason stated as above. Hence application no 3663829 cannot be accepted and refused accordingly."
[Emphasis supplied]
4. Aggrieved by the afore-said Order, Mr. Gaurav Barathi, counsel for the Appellant makes following submissions: -
4.1. The Respondent has erred in refusing registration of the subject mark.
It is claimed that the mark "Indian Oncology Foundation" is a coined and fanciful mark that is unique, inherently distinctive, and exclusive in nature. The said mark was formulated by the Appellant, using its own intellect, in an innovative and creative manner by consciously combining three distinct and exclusive words to create a distinctive word mark viz. "Indian Oncology Foundation".
Signature Not Verified Digitally Signed C.A.(COMM.IPD-TM) 6/2022 Page 3 of 6 By:AKANSHA SINGH Signing Date:25.01.2022 12:21:234.2 The subject mark is not descriptive and hence, is not barred under Section 9(1)(a) and 9(1)(b) of the Act.
4.3 The Respondent has failed in appreciating that the trade mark applied for is a novel mark and has been used in a bona fide manner since the formation of the trust under the name - "Indian Oncology Foundation" since 2007.
4.4 The Appellant has acquired immense goodwill, reputation and is a benchmark of excellence and quality. It has been holding several events, conducting seminars and awareness camps; it also published magazines, newsletters, articles, pamphlets, etc. that highlights developments and events related to the Appellant.
4.5 It has also been operating a website viz. https://iof.org.in/, wherein details relating to the Appellant and activities carried by it, under the trade mark, is clearly reflected. It also has a presence on social media platforms such as Facebook and Twitter.
ANALYSIS
5. The Court has considered the submissions advanced by the Appellant.
6. The impugned trade mark was refused registration under Section 9(1)(a) and 9(1)(b) of the Act being, inter-alia, a descriptive mark. The mark is constituted of three generic words 'Indian', 'Oncology' and 'Foundation'. Further, the Appellant is a Charitable Trust, in the field of cancer management and the subject mark has a direct bearing on the nature of its intended purpose/ object. Therefore, to argue that the mark is not descriptive is not correct. Hence, the primary question that arises for consideration is Signature Not Verified Digitally Signed C.A.(COMM.IPD-TM) 6/2022 Page 4 of 6 By:AKANSHA SINGH Signing Date:25.01.2022 12:21:23 whether the Appellant has established before the Respondent that the subject trade mark has acquired distinctiveness and a secondary meaning. Appellant cannot claim exclusive right over such a mark until and unless it has acquired distinctiveness by continuous use. The Senior Examiner noticed that the User Affidavit filed by the Applicant did not disclose any advertisement or promotional expenditure, share value of the subject mark, territory of the use or any relevant supporting documents to substantiate the claim for 'distinctiveness'. The Appellant had only filed documents such as:
copy of the trust deed, copy of the PAN number, invoices of purchasing goods and services, balance sheet, etc. and some of the documents filed did not even bear a date of issuance. Appellant thus failed to produce relevant documents to substantiate claim for 'distinctiveness'.
7. In order to claim registration, it was imperative to demonstrate that the subject mark had acquired secondary meaning, which under trade mark law means that general public should begin to associate the mark with the applicant alone. The evidence of use must be such that the trade mark should be identifiable as a brand for the specific service which has lost its descriptive connotation and has become a source identifier. The mark can qualify for registration, as and when it acquires secondary meaning for which evidence of use should be such that it overcomes the bar under Section 9 of the Act.
8. The Senior Examiner of Trade Marks has considered all the aforementioned aspects and has rightly observed that the use of the subject mark on the basis of the material shown to him is not equivalent to acquiring Signature Not Verified Digitally Signed C.A.(COMM.IPD-TM) 6/2022 Page 5 of 6 By:AKANSHA SINGH Signing Date:25.01.2022 12:21:23 distinctiveness. The documentary evidence produced before the Respondent referred to hereinabove, do not meet the test required for holding that the subject mark acquired distinctiveness or a secondary meaning
9. Therefore, the Court does not find any infirmity in the view taken by the Senior Examiner of Trade Marks while rejecting the application under Section 9(1)(a) and 9(1)(b) of the Act.
10. The appeal and pending applications are dismissed. It is, however, clarified that the Appellant is permitted to re-apply for registration at a later stage if and when the subject mark meets the criteria, as noted above.
SANJEEV NARULA, J JANUARY 14, 2022/d.negi Signature Not Verified Digitally Signed C.A.(COMM.IPD-TM) 6/2022 Page 6 of 6 By:AKANSHA SINGH Signing Date:25.01.2022 12:21:23