Delhi High Court: Trademarks Must Be Viewed In Entirety When Being Examined For Registration
The appellant had sought a listing of the sign for painting, artistic, and roller brushes
The Delhi High Court has held that the senior examiner erred in invoking Section 9(1) of the Trade Marks Act, 1999 by refusing registration of the mark ‘Bharat’ with the ‘brush’ device.
The bench comprising Justice C. Hari Shankar stated, “In invoking each of the clauses of Section 9(1), the senior examiner has erred in viewing individual parts of the mark, ignoring others. In examining the registrability of the mark, whether under Section 9 or Section 11, the mark must be viewed as a whole.”
The appellant had sought registration of the mark in Class 16 for ‘painting, artistic, and roller brushes.’
However, vide the impugned order, the registration was refused based on Section 9(1)(a) (lack of distinctive character) and Section 9(1)(b) (descriptive of the product applied to).
Appearing on behalf of the appellant, CM Lall, the senior counsel argued that the word ‘Bharat’ could not be considered devoid of distinctive character, as multiple registrations had been granted to it.
Justice Shankar noted that a lack of distinctive character could mean two things; either that the mark was inherently lacking distinctiveness (like the words ‘and’, ‘the’, etc.) or the mark was so commonly used in connection with certain goods or services that it could not act as a source identifier.
In the latter situation, the bench explained, “There must be specific reference in the order of the Registrar identifying the mark, which is ‘common to the trade.’”
The impugned order did not refer to any such mark. Besides, the appellant’s mark, when viewed as a whole, was prima facie distinctive.
While finding fault with the examiner’s invocation of Section 9(1)(b), the judge said, “The device mark of which the appellant sought registration, seen as a whole, cannot be said to be descriptive merely because a paint brush happens to be a part of the mark.”
The word ‘Bharat’ constituted prominent feature of the mark and could not be said to be descriptive of the goods in respect of which it was used.
The court added, “When the brush is seen in conjunction with the word ‘Bharat’, written in a distinctive style, and with the zig-zag swirl on the left upper edge of the mark, the mark cannot, seen as a whole, be said to be descriptive of the product in respect of which its registration was sought.”
The court thus held that the mark was entitled to registration. However, as the date from which the appellant’s claim of user could be accepted was not clear, the matter was remanded back to the senior examiner to decide the date.
Senior advocate CM Lall with advocates A Naqvee, Iman Naqvi, Saurav Choudhary, Yashi Agrawal, and Abhinav Bhalla appeared for the appellant.
The respondent was represented by CGSC Harish Vaidyanathan Shankar, along with advocates Srish Kumar Mishra, Alexander Mathai Paikaday, and Krishnan V.