Author: Arundathi Krishnadas
In the matter of Abu Dhabi Global Market vs The Registrar Of Trademarks [C.A.(COMM.IPD-TM) 10/2023], Single Judge [C. HARI SHANKAR, J.] of the High Court of Delhi, via judgment dated May 18, 2023, set aside an order passed by the Assistant Registrar of Trade Marks which rejected the Appellant’s trade mark application for a device mark consisting of the words “ABU DHABI GLOBAL MARKET”. The application was rejected on the grounds that the impugned application was not coined or invented but rather included a geographical name. The Court held that inventiveness was not a pre-requisite for registration and that a mark could not be refused for registration on the ground that it was not coined or inventive.
Section 9(1)(a) of the Trade Marks Act, 1999 states that “The trade marks which are 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 may not be registered.”. The question that arises is whether inventiveness of a trade mark is a criterion of distinctive character?
While refusing the Application (No. 3184380), one of the grounds stated by the Registrar of Trade Marks (“Respondent”) was that the mark was as a whole non-distinctive as it was neither coined nor invented. With respect to this finding, the Appellant pointed out that the trade name “ABU DHABI GLOBAL MARKET” of the Appellant has been adopted by the Appellant as specifically prescribed under the Federal Laws of United Arab Emirates (UAE). The Appellant also submitted that the device mark was already registered in favour of the Appellants and the mark cannot lose its distinctiveness by mere addition of the words “ABU DHABI GLOBAL MARKET”.
The Appellate Court observed that it does find any requirement for a mark to be “coined” or “inventive” for it to be eligible for registration.It was held that “Distinctiveness is, undoubtedly, a pre-requisite for registration of a mark, but inventiveness is not”. The Delhi High Court thereby set aside the Assistant Registrar’s order rejecting the trademark application and remanded it to the office of the Registrar of Trade Marks for advertisement and further proceedings.
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