High Court of Delhi was dealing with the petition filed under section 91(1) of the Trade Marks Act, 1999 challenging the impugned order dated 26th February, 2021 passed by the Registrar of Trademarks rejecting the Appellant’s application for the registration of trademark ‘SALON PROFESSIONAL’ in Class 3. Objection has been raised by the Registry under sections 9(1)(b) of the Act on the ground that the mark consists of words which may serve in trade to designate the kind, quality, intended purpose and other characteristics of the goods.
Brief Facts:
The Appellant is one of India’s leading direct selling companies offering 350 plus products under 14 different products categories. The Appellant claims to be pioneer of direct selling business in India since 1996. The case of the Appellant is that it adopted the mark ‘SALON PROFESSIONAL’ in 2003 along with its flagship house mark ‘MODICARE’. The trademark ‘MODICARE SALON PROFESSIONAL’ is already registered in the name of the Appellant, bearing number 3308621 dating back to 13th July, 2016 for various products in Class 3. Along with the said mark, the Appellant also simultaneously applied for the registration of the mark ‘SALON PROFESSIONAL’ without the ‘MODICARE’ mark for products in Class 3. The said trademark was examined on 17th November, 2016 by the Examiner and objections under Section 9(1)(b) as also Section 11(1)(b) of the Act were raised. In reply, it was the case of the Appellant that the mark ‘SALON PROFESSIONAL’ is a combination of two unique words ‘SALON’ and ‘PROFESSIONAL’, thus, as a whole it creates a totally distinct mark which is exclusively associated with the Appellant.
Plaintiff’s Contention:
Learned counsel for the plaintiff submitted that insofar as the objection under section 11(1)(b) is concerned, the cited mark / ‘SALON PROFESSIONAL YOU LOOK BE SMOOTH GREAT’ is a combination device mark which is not in any way similar to the Appellant’s mark. It was submitted that the appellant adopted the mark ‘SALON PROFESSIONAL’ in 2003 specifically for products falling in Class 3. The mark has been in continues use since 2003 and, thus, it is the case of the Appellant that it has acquired a secondary meaning. It was submitted that the Appellant is willing to modify the word mark to a device mark. Accordingly, she has handed over copies of the device mark being used by the Appellant.
HC’s Observations:
After hearing both the sides Court observed that a perusal of the manner in which the Appellant is using the mark ‘SALON PROFESSIONAL’ would show that the said mark has been used in a logo form. Since the mark which is in use by the Appellant is a device mark in a logo form, grant of a word mark, especially, considering the nature of the mark sought to be registered, could result in blocking other businesses from using the words ‘SALON’ and ‘PROFESSIONAL’, constituting the mark.
HC after considering the long use of the mark by the Appellant and the fact that the mark ‘MODICARE SALON PROFESSIONAL’ has already been registered in favour of the Appellant stated that the word mark ‘SALON PROFESSIONAL’ in application no. 3308620 would be replaced by the device mark which is being used by the Appellant.
HC Held:
After evaluating submissions made by both the parties the Court held that “the design/ logo mark shall proceed for advertisement subject to the condition that there would be no exclusive rights in the words ‘SALON’ or ‘PROFESSIONAL’. Subject to the above conditions, the mark is directed to proceed for advertisement. Thereafter, if there is no opposition, the mark shall proceed for registration.”
Case Title: Modicare Ltd. v. Registrar of Trademarks
Bench: Justice Prathiba M. Singh
Citation: C.A.(COMM.IPD-TM) 8/2022 & I.A. 744/2022
Decided on: 4th April 2022
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