Can the Title of a Book be Registered as a Trademark? HC replies [Read Judgement]

15 Dec 2021

Categories: Case Analysis Intellectual Property News Latest News

The Delhi High Court in one significient ruling has allowed a Book Title to be taken as a Trademark for a firm.

The single-Judge Bench of Justice C Hari Shankar quashed an order which has refused the registration of trademark to Agatha Christie Ltd. (Company established by famous book writer Agatha Christie in 1955, currently run by her grandson) for "And There Were None" which is the title of a book authored by her.

The Court rejected the ground of Registrar of Trademark, who in the impugned order stated it wasn't 'distinct' enough.

Noting that the Trade Marks Act, 1999, confers, as a matter of right, the right to register a trademark which does not suffer from any of the infirmities which the Act contemplates, the Court observed that Ex facie, the impugned order cannot be sustained either on facts or in law.

"The only ground on which the impugned order refuses registration of the appellant’s mark is that it is not distinctive. I fail, completely, to understand why “AND THEN THERE WERE NONE” is, by any reckoning, not a distinctive mark, when seen vis-a-vis the categories of services in respect of which its registration was being sought. The impugned order does not allege that the mark, or any mark deceptively similar thereto, was ever registered, or even in use in respect of goods or services identical or similar to the marks in respect of which registration was sought by the appellant. Nor could it be alleged that the mark “AND THEN THERE WERE NONE” was descriptive of the services in respect of which its registration was sought by the appellant."

The Court found the proposed trademark to be not into any category of grounds on which registration of a mark used, or proposed to be used, as a trademark, may be refused, as contained in Sections 9, 11 and 13 of the Act.

"The circumstances in which registration of a mark can be refused, being specifically statutorily delineated in the Trade Marks Act, have to be regarded as exhaustive. Absent any of these circumstances, therefore, a request for registration of a trademark cannot be refused."

The Court went onto note that names, words and combinations or names/words are “marks”, within the meaning of “Trade mark” and “mark”, are defined in Clauses (zb) and (m) of Section 2(1) of the Trademarks Act, 1999.

The Court failed to figure how the Registrar of Trademark reached the conclusion “trade mark”, is not be capable of being represented graphically and distinguishing the goods of one person from those of others, which the only other criteria of 'trademark'

"There is no finding or observation, by the author of the impugned order, that the name “AND THEN THERE WERE NONE” is not capable of being represented graphically or is incapable of distinguishing the services being provided, or intended to be provided, by the appellant, from those provided or intended to be provided by others."

Justice C Hari Shankar did mention to the Respondent that he is an admirer of the Author and registered his objections to him heading the case, which were none.

Read Judgement Here:

Tags : Delhi High Court Trademark Book

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