indus League Clothing Limited Vs. the Assistant Registrar of Trade Marks - Court Judgment

Excerpt:

Judgment:

Order (No.170/2009)

Syed Obaidur Rahaman, Technical Member

1. This is an appeal filed against the order dated 23.06.2008 passed by the Assistant Registrar of Trade Marks, Chennai whereby the application for registration of trade mark “SPIRITUAL FITNESS WEAR” (word mark) filed by the appellant under the Application No.1400403 in Class 25 was dismissed. The Assistant Registrar of Trade Marks, vide order dated 04.12.2007, had refused registration of the mark without assigning any reason. Against this decision, the appellant filed form TM-15 for seeking grounds of decision for the refusal. On the basis of the said Form TM-15, the learned Assistant Registrar passed the following order dated 28.06.08:

“An application for registration of trade mark consisting of word “Spiritual Fitness Wear.” was filed by the aforesaid Applicant under application No. 1400405 in respect of “Clothing, Footwear and headgear, ties, stockings, womens clothing, socks, undergarments, caps, shoes, boots, gloves, scarves” falling in Class-25. The application was examined and examination report containing the objections to the acceptance of application for registration of trade mark was communicated to the Applicant under examination report No. 596 dated 10.04.2006. On the request of the Applicant, a hearing was fixed in this matter. Eventually on 29.11.2007, the application came up before me for hearing. During the course of hearing, the Counsel for the applicant argued that the mark was qualified for registration but the application was refused under Sections 9 and 11 of the Trade Marks Act, 1999. The decision as to the refusal of the trade mark was communicated to the Applicants Agent vide letter No. TLA/19139 dated 4.12.2007.

The Applicants Agent has filed this request on from TM-15 seeking the grounds of decision.

The application No. 1400403 is made for registration of trade mark consisting of word “Spiritual Fitness Wear.” in Class-25. The mark is descriptive of goods and the same is not capable of distinguishing the applicants goods from goods of others.

Section 9 of the Trade Marks Act, 1999 reads as under:

“The trade marks---

(a) 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;

(b) which consist exclusively or marks or indications which may serve in trade to designate the kind, quality, quantity, intended purpose, values, geographical origin or the time to production of the goods or rendering of the service or other characteristics of the goods or service;

(c) which consist exclusively or marks or indications which have become customary in the current language or in the bonafide and established practices of the trade, shall not be registered…”

The trade mark applied for registration consists exclusively of words which may serve in the trade to designate the kind and quality of the goods and it is not capable of distinguishing the applicants goods from the goods of others, therefore the registration of this trade mark is barred under Section 9(1) of the Trade Marks Act, 1999.

As communicated in the Examination Report, the following mark is already on record:

Trade Mark

Application No. and Class

Goods

Proprietor

SPIRITUAL

1219987 / 25

Readymade Garments, headgears and footwear included in Class-25

Kalyani Apparels Pvt. Ltd., D-44, Sector-2, Noida – 201 301 (U.P.).

The above mentioned mark is identical/similar to the mark applied by the applicant under the application in hand.

Section 11 of the Trade Marks Act, 1999 reads as under:

‘…(1) save as provided in Section 12, a trade mark shall not be registered if, because of …

(a) its identity with an earlier trade mark and similarity of goods or services covered by the trade mark; or

(b) its similarity to an earlier trade mark and the identity or similarity of the goods or services covered by the trade mark, there exists a likelihood of confusion on the part of the public, which includes the likelihood of association with the earlier trade mark…”

Since the identical/similar trade mark in respect of same/similar goods is already there on record, in the name of different person and there exists a likelihood of confusion because of identity/similarity of earlier trade mark and identity/similarity of goods covered by such trade mark, the registration of this trade mark is barred under Section 11(1) of the Trade Marks Act, 1999.

In view of the above, the application for registration of this trade mark was refused under Sections 9 and 11 of the Trade Marks Act, 1999.”

2. The appeal was taken up for hearing on 17th August 2009, Ms. Sreelatha Mani, Trade Mark Agent appeared on behalf of the appellant and submits matter be remitted back to registrar.

3. Now the issue is that the Registrar dealt with the main two issues under sections 9 (1) and 11 (1) of the Trade Marks Act, 1999. The first issue, in terms of section 9(1) of the Trade Marks Act, 1999, the mark applied for registration consists exclusively of words which may serve in the trade to designate the kind and quality of the goods and it is not capable of distinguishing the applicants goods from the goods of others, therefore the registration of the trade mark is barred under section 9(1) of the Trade Marks Act, 1999. The second issue is that the Registrar refused the application under section 11(1) of the Trade Marks Act, 1999 on the ground that since the identical and similar trade mark in respect of the same and similar goods is already there on record, in the name of different persons and their existence is likely to cause confusion because of the identity and similarity of the goods covered by such trade mark, the registration of this trade mark is barred under section 11(1) of the Trade Marks Act, 1999.

4. We will now discuss about the first issue. The trade mark applied for registration consists exclusively of the word which may serve in the trade to designate the kind and quality of the goods and it is not capable of distinguishing the applicants goods from the goods of others. The application is made for registration of trade mark consisting of word “Spiritual Fitness Wear” in Class-25. The mark is descriptive word. It has direct reference to the goods and the same is not capable of distinguishing the applicants goods from goods of others and mark applied for in a very short period. It is clear that the mark is descriptive mark, therefore, the registration of the trade mark is barred under section 9(1) of the Trade Marks Act, 1999. The second issue as per the examination report, there are so many identical trade marks in respect of “SPIRITUAL” in same Class and similar goods is already there in the Register in the name of different person and their existence is likely to cause confusion because of identity/similarity of the earlier trade mark and identity/similarity of the goods covered by the said trade mark. Therefore, the registration of trade mark is barred under section 11 (1) of the Trade Mark Act, 1999.

5. In view of the above observation, we are of the view that the applied mark is a descriptive mark. The mark applied for registration under the application No.1400403, is made in the year 2006 for registration of trade mark consisting of word “SPIRITUAL FITNESS WEAR” in class 25. The mark is descriptive mark, applied for the goods of clothing, footwear and headgear, ties, stockings, womens clothing, socks, undergarments, caps, shoes, boots, gloves, scarves. In the appeal, they have been stated that they are submitting the sale figures for the period 2005-06 and 2006-07 for two years. A descriptive words may be registerable as per various courts, observations. Also the Apex Court held that even a descriptive word registerable if, it has a secondary meaning, for that case the descriptive word can be registerable. As per latest judgments of High Court of Ahmedabad decided in Sugarfree case, Hamdard Safi case decided by Delhi High Court, M/s. Godfrey Philips cases decided by the Supreme Court, in all these cases marks are used more than three decades.

6. In the instant case, the mark is applied for registration only two years. So this mark has no secondary meaning in short span of time, it cannot reached any secondary meanings, so this descriptive mark cannot acquired any secondary meaning for registration. For this reason, it is barred to registration in terms of section 9 (1) of the Trade Marks Act, 1999. We are of the view that as per the examination report quoted in the order of the Assistant Registrar the ‘Spiritual application No.1219987 in class 25, the goods are readymade garments, headgears and footwear included in class-25 and its registered proprietor is the proprietor Kalyani Apparels Pvt. Ltd., D-44, Sector-2, Noida. As per the section 11(1) (a) and (b) of the Trade Marks Act, 1999. It was covered by the said section and is not registerable in the purview of the said section since the identical and similar trade mark in respect of similar goods is already there on record in the name of different persons. Their existence is likelihood of confusion of the mark, identity and similarity of the earlier trade mark and similarity of the goods covered by such trade mark, the registration of this trade mark is barred under section 11(1) of the Trade Marks Act, 1999. Also it is observed by the various courts and Supreme Court of India as held under:-

(i) In 2004 (2) CTMR 109 (SC) M/s. Godfrey Philip India Limited Vs. Girnar Food and Beverages (P) Ltd – It was held that even a descriptive word, but it has a secondary meaning which identifies it with a particular products or as being from a particular source can be registered.

(ii) In AIR 1980 Delhi 180, Registrar of Trade Marks, New Delhi, is Hamdard National Foundation (India) Where it was held that Safi Dictionery meant pure, fine or clear, but was still allowed to proceed for registration based on its continuous use for more than 20 years.

(iii) In 2008 (36) PTC 168 Del Cadila Healthcare Ltd. Vs. Gujarat Co-operative Milk Marketing Federation Ltd. and others. The learned counsel observed the judgment popularly known as sugar free case that where the particular trade mark has acquired a secondary meaning, thus the mark is registerable.

In the purview of above three judgments, the applied mark has no such reputation or not acquired any secondary meaning. So the applied mark is not registerable.

7. And in the case of Power Control Appliances Vs. Sumeet Machines Private Limited (1994) 2 SCC 448 it was held that there is a one mark, one source and one proprietor. In the purview of the said judgment of Supreme Court, the applied mark is not registerable as because this mark is already registered in the name of a persons, so this mark cannot be allowed for registration to any subsequent person. Registration of this mark barred under section 9(1), 11(1) of the Trade Marks Act, 1999. In view of the above reasons, we are of the view that this appeal be dismissed. We uphold the order of the Assistant Registrar. Consequently, the appeal is dismissed. No order as to cost.