Delhi High Court
Modicare Limited vs Registrar Of Trademarks on 19 April, 2022
Signature Not Verified
Digitally Signed
By:DEVANSHU JOSHI
Signing Date:26.04.2022
01:28:42
$~1, 2 & 22
* IN THE HIGH COURT OF DELHI AT NEW DELHI
Date of Decision: 19th April, 2022
+ C.A.(COMM.IPD-TM) 9/2022 & I.A. 745/2022
MODICARE LIMITED ..... Appellant
Through: Ms. Rajeshwari, H. and Mr.
Vikramjeet, Advocates.
(M:9717996516)
versus
REGISTRAR OF TRADEMARKS .....Respondent
Through: Mr. Harish V. Shankar, CGSC with
Ms. S. Bushra Kazim and Mr. Srish
Kumar Mishra, Advocates for UOI.
(M:9810788606)
2 WITH
+ C.A.(COMM.IPD-TM) 11/2022 & I.A. 969/2022
MODICARE LIMITED ..... Appellant
Through: Ms. Rajeshwari, H. and Mr.
Vikramjeet, Advocates.
versus
REGISTRAR OF TRADEMARKS ..... Respondent
Through: Mr. Harish V. Shankar, CGSC with
Ms. S. Bushra Kazim and Mr. Srish
Kumar Mishra, Advocates for UOI.
22 WITH
+ C.A.(COMM.IPD-TM) 4/2022
MODICARE LIMITED ..... Appellant
Through: Ms. Rajeshwari, H. and Mr.
Vikramjeet, Advocates.
versus
REGISTRAR OF TRADEMARKS ..... Respondent
Through: Mr. Harish V. Shankar, CGSC with
Ms. S. Bushra Kazim and Mr. Srish
Kumar Mishra, Advocates for UOI.
Signature Not Verified
Digitally Signed
By:DEVANSHU JOSHI
Signing Date:26.04.2022
01:28:42
CORAM:
JUSTICE PRATHIBA M. SINGH
Prathiba M. Singh, J.(Oral)
1. This hearing has been done through hybrid mode.
2. These are three appeals challenging the impugned orders by which the
office of Registrar of Trademarks has refused the applications of the
Appellant for the registration of following trademarks:
S. Trade mark Class & Services Date of Mark
No. Appn. No. & impugned
Date order
1. 3306596 Class: 41 1st March ACHIEVERS
& Education, 2021 ACADEMY
11th July, 2016 Providing of
Training,
Entertainment,
Educational
training and
instructional
services,
conducting training
programmes,
seminars,
conference,
workshops,
conventions,
assemblies, editing,
fashion shows for
entertainment
purposes, forming
an organization and
clubs included in
class-41
Signature Not Verified
Digitally Signed
By:DEVANSHU JOSHI
Signing Date:26.04.2022
01:28:42
2. 3306595 Class:35 26th ACHIEVERS
& February ACADEMY
Advertising,
11th July, 2016 Business 2021
management,
Marketing of
products Business
administration
marketing of
products using and
with aid of
brochures,
handbooks
manuals, Stationary
items and training
materials included
in class-35
3. 3306593 Class:41 1st March,
& Education, 2021
11th July, 2016 providing of
training,
entertainment,
educational training
and instructional
services,
conducting training
programmes
seminars,
conferences,
workshops,
conventions,
assemblies, editing,
Fashion shows for
entertainment
purposes, forming
Signature Not Verified
Digitally Signed
By:DEVANSHU JOSHI
Signing Date:26.04.2022
01:28:42
an organization and
clubs included in
class-41
3. The Appellant-M/s Modicare Limited is involved in direct selling
business in India since 1996 and has more than 50 lakhs active consultants
catering to over 2700 cities across the world. For the said direct selling
business, it adopted the following device mark in the year 2015:
4. The mark 'ACHIEVERS ACADEMY' was coined in respect of
events/programs done for honouring its high achieving consultants in order
to boost their confidence. The said step was taken as a human resource
measure to recongnise the achivements of the consultants in fulfilling
various targets.
5. The said mark, after adoption, has been applied for registration under
various classes. The trademark 'ACHIEVERS ACADEMY' is registered in
class 35 as a device mark bearing trade mark number 3306592 and in class
45, both as word mark and device mark bearing trade mark numbers
3306597 and 3306594 respectively. In the present three appeals, the mark
'ACHIEVERS ACADEMY' has been rejected by the Registrar of
Trademarks on the basis of several marks which have been cited in the
examination report, which have the word 'ACHIEVERS ACADEMY'.
6. Ms. Rajeshwari, ld. counsel, appearing for the Appellants submits that
Signature Not Verified
Digitally Signed
By:DEVANSHU JOSHI
Signing Date:26.04.2022
01:28:42
most of the cited marks are not in use. Furthermore, the Appellant has been
using the mark 'ACHIEVERS ACADEMY' with the house mark of the
Appellant being 'MODICARE'. She also submits that the mark
'ACHIEVERS ACADEMY' has been used extensively by the Appellant
since the year 2015 and has also acquired distinctiveness. She submits that
the rejection of the mark 'ACHIEVERS ACADEMY' would cause grave
injustice to the Appellant which has invested in the mark.
7. Mr. Harish, ld. CGSC appearing for the Respondent submits that there
are identical applicants/registrants of the mark 'ACHIEVERS ACADEMY'
as is evident from the examination reports. The details of the cited marks is
as under:
application Mark Class Status
number
1309027 41 Registered
1357942 Achievers Academy 41 Examination
Report issued
2296486 41 Objected
2671855 41 Objected
1201081 Achievers 16 Registered
International
Signature Not Verified
Digitally Signed
By:DEVANSHU JOSHI
Signing Date:26.04.2022
01:28:42
2053188 16 Opposed
2458618 16 Objected
2522460 Achievers 16 Objected
2690388 16 Objected
3210320 Achievers Point 16 Objected
2256639 35 Registered
1271322 Achievers (Label) 41 Registered
2432932 41 Objected
8. A perusal of the cited marks shows that there are various identical
applications/registrations for the mark 'ACHIEVERS
ACADEMY/ACHIEVERS'. In respect of Appellant's application no.
336596, the Registry has cited 4 marks in the examination report. Out of the
said four marks, one of them is stated to have already been removed from
the register. Remaining three marks are not being used by the
applicants/proprietors as per the Appellant. Insofar as other marks are
concerned, they are consisting of either the word 'ACHIEVERS' or
'ACADEMY'.
9. In any event, the Appellant itself has used the mark 'ACHIEVERS
ACADEMY' along with the house mark 'MODICARE'. Turnover of the
Appellant by the usage in its direct selling business is also quite high.
Signature Not Verified
Digitally Signed
By:DEVANSHU JOSHI
Signing Date:26.04.2022
01:28:42
10. After taking an overall view of the matter, this Court is of the opinion
that the applications filed by the Appellant be proceed for advertisement,
subject to the following conditions:
(1) In each of the applications, the house mark 'MODICARE' shall
be added by filing a specific Form by the Appellant as a prefix to the
mark 'ACHIEVERS ACADEMY'.
(2) All three applications shall be associated with the registered
trademarks bearing no. 3306592, 3306594, and 3306597 of the
Appellant in classes 35 and 45.
(3) The description of the goods in all the applications shall be
confined to direct selling business in the following manner.
"Education, providing of training, entertainment,
educational training and instructional services,
conducting training programmes seminars,
conferences, workshops, conventions, assemblies,
editing, Fashion shows for entertainment
purposes, forming an organization and clubs
included in class-41 in respect of direct selling
business.
And
"Advertising, Business management, Marketing of
products Business administration marketing of
products using and with aid of brochures,
handbooks manuals, Stationary items and training
materials included in class-35 in respect of direct
selling business"
11. Steps be taken by the office of the Registrar of Trade Marks, as
directed above. It is made clear that if any third party opposes any of the
marks of the Appellant, the same shall be adjudicated in accordance with
law without being affected by the observations made by the Court in the
Signature Not Verified
Digitally Signed
By:DEVANSHU JOSHI
Signing Date:26.04.2022
01:28:42
present order.
12. All the three appeals, along with all pending applications, are
disposed of in the above terms.
PRATHIBA M. SINGH
JUDGE
APRIL 19, 2022/dk/sk
