Court’s Decision:
The High Court of Bombay, after reviewing the case, allowed the petition filed by the petitioner (Khadi and Village Industries Commission). The Court overturned the decision of the Registrar of Trade Marks, who had previously refused the registration of the petitioner’s device mark under Section 9(1)(b) of the Trade Marks Act, 1999. The Court further ordered that the Registrar take steps for registration, including advertising the mark and proceeding with other formalities under the provisions of the Trade Marks Act, 1999. The Court held that the Registrar had erred in refusing the mark, emphasizing the holistic evaluation of composite marks.
Facts:
The petitioner, Khadi and Village Industries Commission (KVIC), is a statutory body formed under an Act of Parliament. It is involved in the promotion of Khadi and village industries. The petitioner has been using the name “KHADI” on various products for a long time, and its mark has been recognized as well-known by both the Delhi High Court and the Trade Mark Registry.
In December 2020, the petitioner launched an anti-fungal, anti-bacterial paint under the brand “VEDIC PAINT.” The product, developed with the inclusion of cow dung, was promoted through public events and social media platforms. In 2021, KVIC filed an application for registering a device mark in Class 2 for the paint, which consisted of various components, including the word “VEDIC PAINT” and the image of a cow’s head.
However, the Registrar rejected the application for registration under Section 9(1)(b) of the Trade Marks Act, which bars the registration of marks that consist exclusively of words which merely describe the goods or services. The Registrar contended that the words used in the mark were descriptive in nature, especially the terms “Prakritik” (meaning natural) and “paint.”
Issues:
The main issues in the case were:
- Whether the refusal of registration under Section 9(1)(b) of the Trade Marks Act was justified.
- Whether the petitioner had sufficiently demonstrated the use of the mark to satisfy the requirements of registration.
- Whether the individual components of the composite mark could be registered or should be considered as a whole.
Petitioner’s Arguments:
The petitioner’s counsel argued that the mark in question was a composite or device mark and should be considered as a whole. The petitioner emphasized that Section 9(1)(b) of the Trade Marks Act only prohibits the registration of marks that are purely descriptive of goods or services, but this provision does not apply to composite marks, which should be evaluated in their entirety.
The petitioner further pointed to the case of Registrar of Trade Marks vs. Ashok Chandra Rakhit Ltd. (AIR 1955 SCC 558), where the Supreme Court clarified that the registration of a device mark (or label mark) gives exclusive rights over the entire mark as a whole, not over individual elements. Therefore, the refusal of registration based on individual words within the device mark was erroneous. Additionally, the petitioner submitted that there was sufficient proof of public use of the mark, including media promotions and visibility on official social media pages.
The petitioner also noted that the Registrar had mistakenly claimed that no affidavit of use was filed, even though such an affidavit had been provided.
Respondent’s Arguments:
The Registrar of Trade Marks, defending its decision, argued that the words “Prakritik” (natural) and “paint” were descriptive and could not be exclusively claimed by the petitioner. The Registrar also stated that the phrase at the bottom of the mark (translated to “India’s first paint made from cow dung”) described the origin and nature of the product. Therefore, the Registrar argued, under Section 9(1)(b), the registration of such a descriptive mark was not warranted.
Moreover, the Registrar referenced Section 17 of the Trade Marks Act, which outlines that when a mark is made up of several elements, exclusive rights cannot be claimed over individual parts unless they are registered separately.
Analysis of the Law:
The case involved a detailed analysis of two main sections of the Trade Marks Act:
- Section 9(1)(b): This section prohibits the registration of marks that are exclusively descriptive of the goods or services they represent. The Court noted that the Registrar had improperly applied this provision to a composite or device mark.
- Section 17: This provision applies to composite marks, indicating that a mark made up of multiple elements must be viewed as a whole when registering it. The Court emphasized that registration confers exclusive rights over the entire mark and not its individual parts.
The Court further referred to previous cases to determine the correct application of these provisions, focusing on the importance of viewing a composite mark in its entirety and not breaking it down into individual descriptive components.
Precedent Analysis:
- Registrar of Trade Marks vs. Ashok Chandra Rakhit Ltd. (AIR 1955 SCC 558): In this landmark case, the Supreme Court held that when a mark is a composite or device mark, it should be considered as a whole. The individual components of the mark do not enjoy independent exclusivity.
- Abu Dhabi Global Market vs. Registrar of Trade Marks: The Delhi High Court clarified that Section 9(1)(b) does not apply to composite marks, even if parts of the mark are descriptive. Composite marks must be analyzed in totality.
The Court also considered the judgment in Consolidated Foods Corporation vs. Brandon and Company Private Limited (AIR 1965 Bom 35), where it was held that public use of a mark, even if not accompanied by formal invoices, can establish the mark’s registration eligibility.
Court’s Reasoning:
The Court agreed with the petitioner’s arguments that a composite mark should be assessed in its entirety. It found that the Registrar had wrongly focused on the descriptive elements of the mark, which was a device mark, and had failed to apply the law properly. The Court highlighted that the statutory framework under Section 17 allows for exclusive rights over the mark as a whole, even if parts of the mark are descriptive.
The Court also criticized the Registrar for ignoring key evidence, including the petitioner’s affidavit of use and the media visibility the product had gained. It was noted that the evidence showed the mark had been actively used in commerce and promoted publicly.
Conclusion:
The High Court concluded that the refusal to register the mark under Section 9(1)(b) was incorrect and ordered that the application be allowed to proceed for registration. The Court directed the Registrar to proceed with the necessary steps for registration under the provisions of the Trade Marks Act.
Implications:
This judgment has significant implications for the registration of composite marks. It reinforces the principle that a composite or device mark should be considered as a whole, rather than focusing on individual descriptive components. It also underscores the importance of recognizing public use and promotional efforts when assessing a mark’s eligibility for registration, especially when the mark is not purely descriptive but includes distinctive design elements.
This case clarifies that marks with descriptive words, when used as part of a composite design, are not automatically disqualified from registration. It provides a valuable precedent for future cases involving the registration of device marks under the Trade Marks Act.
