Trademarks | When Examining For Registrability U/s 9 Or 11, Marks Ought To Be Viewed As A Whole: Delhi High Court

“In invoking each of the clauses of Section 9(1), therefore, the Senior Examiner has erred in viewing merely individual parts of the mark, ignoring others. In examining the registrability of the mark, whether under Section 9 or Section 11, the mark has to be viewed as a whole.”

Notably, the appellant had sought registration of the mark in Class 16 for “painting brushes, artistic brushes, roller brushes”. Vide the impugned order, registration was refused based on Section 9(1)(a) (lack of distinctive character) and Section 9(1)(b) (descriptive of the product applied to) of TMA.

Senior Counsel CM Lall argued for the appellant that the word “BHARAT” could not be said to be devoid of distinctive character as multiple registrations had been granted to it.

Interpreting Section 9(1)(a), Justice Shankar noted that lack of distinctive character could mean two things; either that the mark was inherently lacking distinctiveness (like the words ‘and’, ‘the’, etc.) or that 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 court said, “there must be specific reference, in the order of the Registrar, identifying the mark which is thus “common to the trade”.”

It was observed that the impugned order did not refer to any such mark. Besides, the appellant’s mark, when viewed as a whole, was prima facie distinctive.

Finding fault with the Senior Examiner’s invocation of Section 9(1)(b), the court opined that the focus seemed to have been on the paint brush in the mark, which constituted only a part thereof.

“The device mark of which the appellant sought registration, seen as a whole, cannot be said to be descriptive in nature merely because a paint brush happens to be part of the mark.”

It was added that the word “BHARAT” constituted prominent feature of the mark and could not be said to be descriptive of the goods in respect of which mark was used.

“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.”

In effect, the mark was held entitled to registration. However, as the date from which appellant’s claim of user could be accepted was not clear, the matter was remanded back to the Senior Examiner to decide the relevant date.

Senior Advocate CM Lall with Advocates A Naqvee, Iman Naqvi, Saurav Choudhary, Yashi Agrawal and Abhinav Bhalla appeared for appellant

CGSC Harish Vaidyanathan Shankar with Advocates Srish Kumar Mishra, Alexander Mathai Paikaday and Krishnan V appeared for respondent-Registrar

Case Title: Muneer Ahmad v. Registrar of Trade Marks, C.A.(COMM.IPD-TM) 20/2023

Citation: 2023 LiveLaw (Del) 1179