Full Judgment Text
Neutral Citation Number: 2022/DHC/004437
$~25
* IN THE HIGH COURT OF DELHI AT NEW DELHI
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% Date of Decision: 14 October, 2022
+ C.A.(COMM.IPD-TM) 120/2022
SEAL FOR LIFE INDUSTRIES US LLC ..... Appellant
Through: Mr. Varun Sharma, Ms. Swati Mittal,
Mr. Dheeraj Kapoor, Mr. Aditya Goel and
Ms. Priyanka Anand, Advocates.
versus
THE REGISTRAR OF TRADE MARKS ..... Respondent
Through: Mr. Harish Vaidyanathan Shankar,
Central Government Standing Counsel with
Mr. Srish Kumar Mishra, Mr. Sagar Mehlawat and
Mr. Alexander Mathai Paikaday, Advocates.
CORAM:
HON'BLE MS. JUSTICE JYOTI SINGH
JUDGEMENT
JYOTI SINGH, J. (ORAL)
1. Present appeal has been filed under Section 91 of the Trade Marks
Act, 1999 (hereinafter referred to as the ‘Act’) assailing two orders dated
29.07.2020 and 23.12.2021, passed by the Senior Examiner of Trade Marks.
2. By order dated 29.07.2020, Respondent refused registration of the
trademark application bearing No. 2902137 in class 09 for the mark
‘ANODEFLEX’ under Section 9(1)(b) of the Act and vide order dated
23.12.2021, detailed grounds of refusal were published by the Respondent.
As the impugned order indicates, the application has been rejected on the
ground that the mark ANODEFLEX has a dictionary meaning and is
descriptive of the products in respect of which registration is sought.
Signature Not Verified
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Signed By:KAMAL KUMAR
Signing Date:25.10.2022
23:05:52
Neutral Citation Number: 2022/DHC/004437
Relevant part of the order reads as follows:
“Submitted:
Disposal: TM-M-Request for statement of grounds of decision
2902137 The Trade Mark “AnodeFlex” in class 9.
With reference to the Trade Mark Application no. 2902137
The Trade Mark “AnodeFlex” in class 9 with respect to the
goods “Electric apparatus and instruments, not included in
other classes, electric cables and wires, insulated; non-metallic
sheaths for electric cables and wires; electric element coils;
electric resistor materials and electric conductor materials;
electric apparatus and instruments to prevent, remove, or fight
off against rust in metal surfaces; cable materials for protection
against electromagnetic influence; thermostats, electric current
conductors, electric junction boxes, electrical connectors, fuses,
plugs, sockets, end pieces, contact cards, wall socket boxes, as
well as parts and fittings of the above mentioned goods, not
included in other classes”.
In the Subject matter the Trade Marks Application no 2902137
The Trade Mark ‘AnodeFlex’ in class 9 in its dictionary
meaning is an impressed current, flexible cable anode system
for use in cathodic protection of buried structures. Placed
alongside a pipe or other buried metal structure, AnodeFlex
provides uniform cathodic protection to every point, with a
minimum of interference from adjacent structures which is
highly descriptive to the goods applied for.
The mark applied for registration is objectionable under S
9(1)(b) of the Trade Marks Act, 1999, as it consists of 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 service or other
characteristics of the goods or service. SEC 9(1) B
OBJECTION HENCE REFUSED. THE MARK IS
DESCRIPTIVE. OBJECTION UNDER SECTION 9 (1) B OF
THE ACT
Hence the request has disposed off accordingly.”
Signature Not Verified
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Signed By:KAMAL KUMAR
Signing Date:25.10.2022
23:05:52
Neutral Citation Number: 2022/DHC/004437
3. Bereft and shorn of unnecessary details and concisely put, contentions
of the Appellant inter alia are: (a) the mark ‘ANODEFLEX’ is a coined
term and when seen as a whole does not have a dictionary meaning;
(b) Appellant through its predecessor has been using the mark since early
1980s in the International commercial arena, when the application for the
formative mark ‘RAYCHEM ANODEFLEX’ was filed in U.S.A. and was
granted registration on 26.02.1985; (c) in India, the Appellant through its
predecessor has been using the mark since 31.03.1994; (d) Appellant enjoys
registrations in the trademark in several jurisdictions across the world
including but not limited to Canada, Brazil, Japan, Switzerland, Italy etc.
and no objection was ever raised that the mark is descriptive and thus, a
similar treatment ought to be meted out in India; (e) impugned order is based
on an erroneous understanding that the mark ANODEFLEX has a dictionary
meaning and this conclusion is drawn based on contents, deduced from third
party websites referring to the product description of ANODEFLEX,
available on Appellant’s own website; (f) from a search on various online
dictionaries such as Oxford, Collins, Macmillan, Merriam-Webster, etc., it is
clear that the alleged meaning of the term, noted in the impugned order, is
not to be found in any dictionary; and (g) Respondent has overlooked
the Proviso to Section 9 of the Act and failed to appreciate that the
trademark is a unique and unusual combination of ‘ANODE’ and ‘FLEX’
and seen in entirety does not serve in the trade to designate kind,
quality, quantity or characteristics of the goods and having been vastly,
extensively and continuously used for a long period of time in the global
arena as well as in India for goods in class 09, has acquired indubitable
distinctiveness.
Signature Not Verified
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Signed By:KAMAL KUMAR
Signing Date:25.10.2022
23:05:52
Neutral Citation Number: 2022/DHC/004437
4. Learned counsel for the Appellant places reliance on the judgment in
Globe Super Parts v. Blue Super Flame Industries, 1985 SCC OnLine Del
373, wherein it was held that the contention that ‘Super’ is a laudatory word,
‘Flame’ is descriptive, therefore, ‘SUPERFLAME’ cannot be exclusively
appropriated, is based upon a misconception that it is permissible to dissect
the word SUPERFLAME. The word has to be considered as a whole.
Reliance is also placed on Living Media India Ltd. v. Jitender V. Jain and
Anr., 2002 SCC OnLine Del 605, wherein the Court held that a combination
of certain words can be registered as a trademark if a prior, long, extensive
and continuous user in relation to the goods for which registration is sought,
is shown though separately, the words being descriptive or dictionary words
may not pass the muster.
5. Mr. Harish Vaidyanathan Shankar, learned Central Government
Standing Counsel appearing on behalf of the Respondent, per contra,
contends that the mark ANODEFLEX is hit by the provisions of
Section 9(1)(b) of the Act being descriptive in nature and sufficient
documentation/evidence has not been provided by the Appellant to establish
its presence in India. It is also argued that the registration of the mark
RAYCHEM ANODEFLEX under no. 73472523 stands cancelled under
Section 7 of the Act, on account of the registrant having surrendered the
registration. Attention of the Court is drawn to various entities who are
purportedly using either FLEX or ANODE as names of their products such
as LIDA® Flex Anodes, TELPRO MMO Flex-Anode etc.
6. Heard the learned counsels for the parties.
7. As per the narrative in the Appeal, an application for registration of
the trademark ‘ANODEFLEX’ was filed by the Appellant on 13.02.2015 in
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Signed By:KAMAL KUMAR
Signing Date:25.10.2022
23:05:52
Neutral Citation Number: 2022/DHC/004437
respect of goods falling under class 09 in the name of COVALENCE
SPECIALTY ADHESIVES LLC, A Delaware Corporation, claiming user
since 31.03.1994, in India. The mark has been adopted and used in India in
relation to inter alia design, supply, installation and commissioning of
cathodic protection systems. Appellant’s predecessor(s) worked with various
reputed organisations and undertakings in India such as IOCL, GAIL and
entered into several contracts between July, 1994 to January, 2007. The
mark is registered in several jurisdictions across the world and no trademark
office raised any objection that it is descriptive. Appellant uses the domain
name www.sealforlife.com , which is prominently displayed on its website
showing its commercial presence. The trademark is also shown on several
social media platforms such as LinkedIn, YouTube, etc. Search of the mark
ANODEFLEX, on various search engines like Google, Yahoo, returns
results solely associated with the Appellant’s products and prominently
showcases that apart from the Appellant’s website, many third-party
websites have made its products available for sale.
8. There is no gainsaying that any trademark, which steers clear of the
objections under the provisions of the Act, is entitled to registration and the
grounds on which registration of a mark used or proposed to be used as a
trademark may be refused, are provided in Sections 9, 11 and 13 of the Act.
Insofar as distinctiveness is concerned, it is a settled law that a mark can be
either inherently distinctive or acquire distinctiveness through secondary
meaning. Inherently distinctive marks such as arbitrary, invented and coined
marks, are granted higher degree of protection. Suggestive marks may also
fall in the first category while descriptive marks can be registered, provided
they have acquired a secondary meaning. Therefore, it cannot be said that a
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Signed By:KAMAL KUMAR
Signing Date:25.10.2022
23:05:52
Neutral Citation Number: 2022/DHC/004437
mark can be straightway rejected only because it appears to be descriptive in
character. The Senior Examiner would be required to examine whether the
mark has acquired distinctiveness, by scrutinizing its extent and length of
user, registrations, if any, in other jurisdictions etc. and any decision that is
taken by the Senior Examiner, in my view, should be an informed and a
reasoned one. It needs no reiteration that right to register a mark is a
valuable right and a decision bereft of reasons cannot be sustained when it
seeks to take away a valuable right.
9. Perusal of the impugned order reflects that the Senior Examiner has
objected to the mark ‘ANODEFLEX’ under Section 9(1)(b) of the Act on
the ground that it is descriptive. Relying on its alleged dictionary meaning
i.e. impressed current, flexible cable anode system for use in cathodic
protection of buried structures, it is stated that placed alongside a pipe or
other buried metal structure, AnodeFlex provides uniform cathodic
protection to every point, with a minimum of interference from adjacent
structure and is highly descriptive to the goods in respect of which
registration of the trademark is sought.
10. Amongst the myriad of arguments canvassed by learned counsel for
the Appellant, the prime contention is that the Respondent has arbitrarily
refused the application in total disregard of the proviso to Section 9(1) of the
Act, which provides that a trademark shall not be refused registration if
before the date of the application for registration, it has acquired a
distinctive character as a result of the use made of it. The application was
filed on 13.02.2015, claiming user since 31.03.1994. Section 9 of the Act
provides for absolute grounds for refusal of registration of a mark and one of
them is if a mark is descriptive in nature. It has been held in several
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Signed By:KAMAL KUMAR
Signing Date:25.10.2022
23:05:52
Neutral Citation Number: 2022/DHC/004437
judgments that where a mark is descriptive but it is established that it has
acquired a secondary meaning, it is amenable to grant of registration.
Likewise, the proviso to Section 9 of the Act, which is an exception, permits
registration of a mark which has acquired a distinctive character. Distinctive
nature of a mark can be established based on character of the mark, extent of
use of the mark, global priority in adoption, well-known status, advertising
and promotional investment, etc. [Ref.: Dubai Islamic Bank v. Union of
India & Ors. decided on 04.12.2019 in W.P.(C) 12749/2019] . Thus, the
Registrar is required to consider all of these factors before arriving at a
conclusion that there is an absolute bar against registration of the mark.
11. Perusal of the averments made in the appeal shows that the Appellant
through its predecessor has been using the mark ANODEFLEX in the
international commercial arena since mid 1980s and in India since
31.03.1994, through its predecessor and documents have been filed in
support thereof. Appellant has obtained registrations in the said mark in
several jurisdictions of the world including but not limited to Canada, Italy,
Japan, etc. and it is the stated case of the Appellant that no objection on
ground of ‘descriptiveness of the mark’ was raised by the respective Trade
Mark Offices in the said jurisdictions. A list of foreign registrations along
with copies of Registration Certificates are stated to be filed before the
Trade Marks Registry. Apart from the website of the Appellant, commercial
presence of the Appellant and use of its trademark can be found on various
social/professional media platforms like Linkedin, YouTube, etc., which
have disseminated awareness of the Appellant’s mark in respect of the
technology and product thereunder. Various third-party websites showcase
the Appellant’s product, as averred. Appellant’s predecessor has worked for
Signature Not Verified
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Signed By:KAMAL KUMAR
Signing Date:25.10.2022
23:05:52
Neutral Citation Number: 2022/DHC/004437
several reputed Indian organisations and undertakings such as IOCL, GAIL,
etc., in respect of which documents pertaining to the contracts entered into
in India between July 1994 to January 2007 were also filed. In support of the
continuous and extensive use of the mark, copies of redacted invoices from
July 2008 to March 2019 are filed along with copies of manufacturers’
certificates of inspection. In view of all these, the submission of the
Appellant is that the documents filed before the Trade Marks Registry
evidence that the mark ANODEFLEX has attained substantive goodwill and
reputation amongst members of the trade and public in India and is
associated with the Appellant. The documents corroborate the fact that the
mark has become distinctive and the Senior Examiner has erred in
ignoring the proviso to Section 9(1) of the Act for the purpose of processing
the application for registration and the Court finds merit in the said
submission.
12. In view of these facts and the plethora of documents relied upon by
the Appellant, evidencing that the mark was adopted over 40 years ago
internationally and nearly 3 decades ago in India, this Court is of the opinion
that the Respondent erred in outrightly rejecting the mark on the sole ground
that it is descriptive and without even examining whether the mark had
acquired a secondary significance or had become distinctive.
13. In view of the aforesaid, the impugned order is quashed and set aside.
The matter is remitted back to the Respondent to reconsider the same afresh
and in case, it is found that the application does not suffer from the fatal
infirmities under the provisions of the Act, the mark ANODEFLEX shall
proceed for advertisement in the Trade Marks Journal, in accordance with
law.
Signature Not Verified
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Signed By:KAMAL KUMAR
Signing Date:25.10.2022
23:05:52
Neutral Citation Number: 2022/DHC/004437
14. It is made clear that this Court has not expressed any opinion on the
merits of the case and the matter shall be decided in accordance with law
and uninfluenced by any observations made in the present judgment.
15. Appeal is accordingly allowed and disposed of in the aforesaid
terms.
JYOTI SINGH, J
OCTOBER 14, 2022/ shivam/rk
Signature Not Verified
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Signed By:KAMAL KUMAR
Signing Date:25.10.2022
23:05:52