Full Judgment Text
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* IN THE HIGH COURT OF DELHI AT NEW DELHI
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Date of Decision: 16 August, 2023
+ C.A.(COMM.IPD-TM) 47/2022
FLUKE CORPORATION, 6920 SEAWAY BOULEVARD
EVERETT, WASHINGTON 98203, USA ..... Appellant
Through: Mr. Pravin Anand and Ms. Sandhya
Singh, Advs. (M: 9810055641 )
versus
REGISTRAR OF TRADEMARKS, BOUDHIK SAMPADA
BHAVAN, PLOT NO. 32, SECSTOR-14, DWARKA,
NEW DELHII ..... Respondent
Through: Mr Harish Vaidyanathan Shankar
CGSC with Mr Srish Kumar Mishra
Mr Sagar Mehlawat and Mr
Alexander Mathai Paikaday, and Mr
M Sriram, Advs. (M: 98107 88606)
CORAM:
JUSTICE PRATHIBA M. SINGH
Prathiba M. Singh, J.(Oral)
1. This hearing has been done through hybrid mode.
2. The present appeal has been filed under Section 91(1) of Trade Marks
Act, 1999 by the Appellant-Fluke Corporation challenging the impugned
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order dated 10 December 2018 passed by the Respondent-Registrar of
Trademarks.
3. Vide the impugned order, the Appellant’s Trademark Application
bearing no. 2354325 dated 26th June 2012 for the mark ‘DATAPAQ’ in
Class 9 ( ‘the Application’ ) has been rejected under Section 9(1)(b) of the
Trade Marks Act, 1999 on the ground that the same is descriptive of the
goods and services.
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4. On 4 July, 2022, a statement was made on behalf of the Appellant
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that it is willing to restrict the mark ‘DATAPAQ’ qua certain goods for
temperature systems and temperature profiling. Ld. Counsel for the
Appellant was directed to place on record an amended description of goods.
The same has been placed on record today. The new description of goods
read as under:
“ computer software for temperature profiling
systems in the fields of heavy clay and ceramics,
heat treating, electronics manufacturing and the
finishing industry: temperature profiling system
comprised of electronic data loggers,
thermocouples, thermocouple jigs, humidity
sensors, telemetry hardware, thermocouple
probes, and computer software, together with
thermal insulation barriers, for use to analyze,
monitor, record, and log data regarding
temperatures in the heat treatment industry,
product finishing industry, heavy clay and
ceramics industry, electronics manufacturing
industry, solar cell and photovoltaic module
manufacturing industry, and food industry:
electronic data logger sensors: thermocouples:
thermocouple jigs: humidity sensors: telemetry
hardware: thermocouple probes: computer
software for analyzing, monitoring, recording, and
logging data for use in the heat treatment industry:
computer software for analyzing, monitoring,
recording, and logging data for use in the product
finishing industry: computer software for
analyzing, monitoring, recording, and logging
data for use in the heavy clay and ceramics
industry: computer software for analyzing,
monitoring, recording, and logging data for use in
the electronics manufacturing industry: computer
software for analyzing, monitoring, recording, and
logging data for use in the solar cell and
photovoltaic module manufacturing industry:
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computer software for analyzing, monitoring,
recording, and logging data for use in the food
industry: computer software to monitor and
control factory manufacturing processes: and
computer software for temperature profiling
systems in the heat treatment industry, product
finishing industry, heavy clay and ceramics
industry, electronics manufacturing industry, solar
cell and photovoltaic module manufacturing
industry, and food industry: electrical and
scientific apparatus ”
5. The Appellant has, in effect, deleted the following three descriptions.
● Electronic data logger sensors
● Thermocouple trays
● Electronic data loggers
6. A perusal of the mark would show that the Appellant is seeking
registration of the mark ‘DATAPAQ’ as a word mark. The said mark is,
according to the Appellant, being used as temperature monitoring and
temperature profiling software systems. The Appellant is also using the
mark such as WICKEDPAQ, MONOPAQ, etc. as a series of marks.
7. A perusal of the examination report and the search report dated 24th
June 2013 on record would show that there are several other parties, having
registrations in respect of the marks consisting of the word ‘DATA’
‘PAQ/PACK’ as well.
8. Such marks include DATA I/O, PACKIT, DATA WORLD, PACK
TRACK, PACKTOP, DATA, PACK1, DATA ROBOTICS, DATA
XPLOD, PACK POWER, DATA FLO, PACKWIN, DATA RESOLVE
TECHNOLOGIES.
9. Search report filed by the Appellant dated 9th May 2018 also reveals
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that marks similar to the Appellant’s mark ‘DATAPAQ’ exist as words
‘DATA’ and ‘PACK’ or ‘PAQ’.
10. A perusal of the impugned order would show that the only reasoning
given by the Registrar is captured in a very cryptic manner, in one sentence
as under:
“ Adv. Akanksha appeared. Matter argued. The *
Trade Mark is descriptive. So obj. u/s 9
maintained. Hence Refused. ”
11. Heard. The Appellant, established in 1948, is stated to be a global
leader in compact electronic test tools. The company, headquartered in
Everett, Washington, USA, operates manufacturing centers in multiple
countries and has sales and service subsidiaries across various regions. With
over 100 authorized distributor and manufacturer representative channels,
the Appellant employs around 2,400 people. One of its divisions, Fluke
Process Instruments, specializes in designing and manufacturing infrared
temperature measurement solutions for industrial applications. The
division's products are claimed to be distributed globally under brands such
as Raytek, Ircon, and DATAPAQ, aiming to provide crucial temperature
measurement and analysis systems for manufacturing processes involving
ovens, kilns, and furnaces.
12. A perusal of the above impugned order, shows that the only objection
is that the trademark is descriptive. In Bata India Ltd. v. Chawla Boot
House [CS (COMM) 110/2019, decision dated 16th April 2019] , the
Plaintiff sought protection of its mark ‘POWER’, against the use of the
Defendant’s mark ‘POWER FLEX’ in respect of footwear. The Court held
that ‘POWER’ is a distinctive mark in respect of footwear, and injuncted the
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Defendant’s use of the work ‘POWER’. However it was made clear that use
of word ‘POWER’ as part of the Defendant’s slogan cannot be permitted to
be injuncted. This Court observed as under:
“26. The spectrum of distinctiveness of marks
clearly explains how distinctiveness of marks is
to be judged. The spectrum as explained in
McCarthy on ‘Trade Marks and Unfair
Competition’, can be illustratively depicted as
below:
27. Even if one considers the nature of the mark
‘POWER’, it cannot be held to be a descriptive
mark. As the well-known author Mr. J. Thomas
McCarthy, in the treatise on ‘Trademarks and
Unfair Competition’, opines, the question as to
whether the mark is descriptive or suggestive, can
be based on the following tests:
a) Degree of imagination required to connect the
mark with the product; and
b) The Competitor’s need to use the mark.”
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13. In Disruptive Health Solutions v. Registrar of Trade Marks (C.A.
(COMM.IPD-TM) 133/2022, decision dated 8th July 2022) , the main issue
was whether the trade mark application for the mark 'HEALTHSKOOL'
should have been rejected on the grounds that the mark is descriptive under
Section 9(1)(b) of the Trade Marks Act, 1999. The Appellant therein
contended that the mark was not descriptive for the specified products and
highlighted their existing registrations for the same mark under different
classes. The central question was whether the rejection under Section 9(1)(b)
of the Trade Marks Act, 1999 was justified given the nature of the mark and
the products it is intended to represent. Following the decision in Bata India
Ltd. (supra), the Court observed:
“10. The general rule regarding distinctiveness is
that a mark is capable of being protected if either
it is inherently distinctive or has acquired
distinctiveness through secondary meaning . In
the spectrum of distinctiveness, the first category
of marks is of arbitrary, fanciful and invented
marks which is of absolute distinctiveness.
Similarly, suggestive marks can also be registered
due to their inherent distinctiveness. Descriptive
marks can be registered as trademarks provided
secondary meaning is established. Insofar as
descriptive marks are concerned, just because
some portion of the mark may have some
reference or indication as to the products or
services intended for, the same may not be liable
to be rejected straightaway . In such a case, the
merits of the marks would have to be considered
along with the extent of usage. Other registrations
of the applicant would also have a bearing on the
capability of the mark obtaining registration. The
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owner of a mark is always entitled to expand the
goods and services, as a natural consequence in
expansion of business.
11. The test which is applied by the ld. Senior
Examiner in the impugned order is not in
consonance with the settled legal position set out
above. The spectrum of distinctiveness has to be
considered while examining the applications
which come up for registration before the Trade
Mark Registry.
12. In the present case, the mark
'HEALTHSKOOL' has been in use by the
Appellant since 2015. The same is also the subject
matter of several registered marks in various
classes in favour of the Appellant both in logo
form and word form. The Appellant's sales are to
the tune of approximately Rs.23 crores in 2020-21.
The Appellant has further submitted before the
Court that it does wishes to claim any exclusive
rights in the word 'health' per se. In the opinion of
the Court, at this stage, the mark is distinctive
enough to proceed for advertisement .
13. Under these circumstances and in view of the
settled legal position, the impugned order is not
sustainable. The same is, accordingly, set aside.
The application of the Appellant shall proceed
for advertisement in the trademark journal with
the condition 'No exclusive rights in the word
`Health' .”
14. The settled legal position is that descriptive marks can be registered,
provided they acquire secondary meaning. Thus, the reasoning provided in
the impugned order is itself unsustainable as there is no consideration
whether the Appellant’s mark has acquired secondary meaning or not.
15. Moreover, a perusal of the appeal would reveal that the Appellant is a
US Corporation, and has used the mark DATAPAQ since 1985 in various
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countries. The mark DATAPAQ also has been registered in a large number
of countries such as the USA. The Appellant has a number of marks ending
with PAQ such as: COILPAQ, WICKETPAQ, MONOPAQ,
STENTERPAQ, ROTOPAQ LITE, DATAPAQ AUTOPAQ, DATAPAQ
MONOPAQ2. Thus, the mark DATAPAQ is consistent with the series
marks being used by the appellant.
16. Under such circumstances, bearing in mind the current position of the
other pending and registered trade marks on the Register, this Court is of the
opinion that the Appellant’s mark ‘DATAPAQ’ deserves to proceed for
advertisement subject to the following conditions.
(i) No exclusivity shall vest in the word ‘DATA’ or ‘PACK/PAQ’
separately.
(ii) The trade mark registration shall be confined to the word mark
DATAPAQ as a whole.
17. With these conditions, let the Appellant’s mark ‘DATAPAQ’ be
advertised in the trademark journal by the Registrar of Trademark within a
period of 2 months.
18. It is made clear that the present order would not affect opposition
proceedings, if any, filed against the Appellant’s mark.
19. Let the present order be communicated to the Registrar of Trade
Marks at llc-ipo@gov.in .
20. The appeal is disposed of in the above terms. All pending
applications are disposed of.
PRATHIBA M. SINGH, J.
AUGUST 16, 2023/ dk/dn
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