Author: Intern - Aruna Bopche
In the matter of Abu Dhabi Global Market v. The Registrar Of Trademarks [2023:DHC:3476], a single judge bench [Justice C. Hari Shankar] of High Court of Delhi, vide order dated May 18, 2023, allowed an appeal against the refusal order of the Registrar of Trademarks and held that a trade mark application for a composite mark cannot be refused merely on the ground that a part of the mark may be indicative of the geographical origin of goods or services for which the mark is applied for.
Section 9(1)(b) of the Trade Marks Act 1999 (‘Act’) provides an absolute ground for refusal of trademarks “which consist exclusively of marks or indications 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 shall not be registered”. The Act does not specify the nature of ‘indications’and so the question arises whether use of geographical names as a part of composite trademarks itself qualifies the entire mark as an indication capable of designating the origin of the goods or services?
The Appellant contended that inclusion of the geographical name “Abu Dhabi” does not render the composite mark incapable of distinguishing the goods or services of one person from those of others owing to the distinctiveness of the already registered device element . Further, it is submitted that the Act does not proscribe the inclusion of a name of a place in a composite mark.
The Respondent contended that the geographical name “Abu Dhabi” forms a prominent part of the composite mark and therefore lacks distinctiveness.
The court while observing that, “Section 17 of the Trade Marks Act which forbears claiming of exclusivity in respect only of part of a registered trade mark.” held that “It is only if the entire mark exclusively falls within one of the excepted categories envisaged by Section 9(1)(b) that the registration of the mark can be treated as statutorily proscribed.” [Emphasis Supplied by the Court].Allowing the appeal, the Court opined that “Composite marks, therefore, stand ipso facto excluded from the scope of Section 9(1)(b), even if part of such marks consists of marks or indications which serve, in trade, to designate the geographical origin of the goods or services in respect of which the mark is registered.”.
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