Delhi High Court
Information Tv Pvt Ltd. vs Registrar Of Trade Marks on 7 August, 2023
$~31
* IN THE HIGH COURT OF DELHI AT NEW DELHI
+ C.A.(COMM.IPD-TM) 111/2022
INFORMATION TV PVT LTD. ..... Appellant
Through: Ms. Shweta Pandey, Advocate
versus
REGISTRAR OF TRADE MARKS ..... Respondent
Through: Mr. Harish Vaidyanathan
Shankar, CGSC, Mr. Srish Mishra, Mr.
Sriram and Mr. Paikaday, Advs.
CORAM:
HON'BLE MR. JUSTICE C.HARI SHANKAR
JUDGMENT (ORAL)
% 07.08.2023
1. On 30 April 2013, the appellant applied under Section 18(1)1 of
the Trade Marks Act, 1999 for registration of the device mark
in Class 41 of the NICE classification in respect of
Production of radio and television programmes, television
entertainment and programmes included in class 41.
2. The Trade Marks Registry, vide First Examination Report
(FER) dated 16 May 2014, objected to the application on three
grounds; firstly, that the mark was descriptive, as it designated the
kind, quality, quantity, intended purpose, values, geographical origin
or time of production of the goods or rendering of the service in
18. Application for registration.--(1) Any person claiming to be the proprietor of a trade mark used
or proposed to be used by him, who is desirous of registering it, shall apply in writing to the Registrar in the
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prescribed manner for the registration of his trade mark.
Signed By:HARIOM
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respect of which registration was sought, which was not registrable
under Section 9(1)(b)2 of the Trade Marks Act; secondly, that the
registration of the proposed mark was prohibited under the emblems
and names (Prevention of Improper Use) Act, 1950 and, thirdly, that
the mark was similar to earlier trademarks.
3. The appellant responded to the FER vide communication dated
27 July 2016, contesting all the three grounds on which the
registration was proposed to be refused.
4. By order dated 24 September 2018, the senior examiner of
trademarks rejected the petitioner's application under Sections 9 and
11 of the Trade Marks Act. The appellant sought the reasons for the
decision. The senior examiner, thereupon, issued the following
"Statement of Grounds of decision", as envisaged by Rule 36(1) of the
Trade Marks Rules, 2017, on 2 November 2018:
"Gentleman/Madam,
With reference to the above and request on Form TM-M
dated 30/10/2018. It has been decided by the Registrar of Trade
Marks to inform you that hearing in respect of above application
was held on 11/09/2018 and the said application is refused on the
following Grounds:
* Advocate appeared. Matter argued. The Trade Mark is not
distinctive and descriptive to the goods applied. So obj. u/s 9
9. Absolute grounds for refusal of registration.--(1) The trade marks--
(a) which are devoid of any distinctive character, that is to say, not capable of distinguishing
the goods or services of one person from those of another person;
(b) which consist exclusively of marks or indications 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 the service or other characteristics of the goods or service;
(c) which consist exclusively of marks or indications which have become customary in the
current language or in the bona fide and established practices of the trade,
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shall not be registered
Signed By:HARIOM
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cannot be waived Hence Refused
* 9-Absolute grounds for refusal of registration.
* 9(1)(a) The trade mark is devoid of any distinctive
character, that is to say, not capable of Distinguishing the goods or
services of one person from those of another person:
* 9(1)(b) The Trade Mark consist exclusively of marks or
indications which 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 the service or other
characteristics of the goods or services.
* 9(2)(d) - The trade mark: ---its use is prohibited under the
Emblems and Name(Prevention of Improper Use)Act, 1950 (12 of
1950)
Yours Faithfully,
DINESH KHURANA
(SENIOR EXAMINER)"
5. Thereby, the appellant appealed to the learned Intellectual
Property Appellate Board (IPAB) under Section 91 of the Trade
Marks Act, vide the present appeal which, subsequently, was
transferred to this Court consequent to the abolition of the IPAB.
6. During the pendency of these proceedings, it appears that the
appellant has been granted registration of the word mark "India News"
in class 38 and 41 as well as for the device mark in class
7. The present case only deals with the entitlement of the appellant
to registration of the device mark in class 41.
8. Having agreed to register the word mark "India News" in
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Signed By:HARIOM
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favour of the appellant in class 41, it goes without saying that the
respondent cannot possibly object to registering the device mark
in the same class.
9. Given this situation Mr. Harish Vaidyanathan, learned CGSC
appearing for the Registrar of Trade Marks leaves the matter to the
Court.
10. In the aforesaid facts and circumstances, no occasion arises for
this Court to enter into the merits of the controversy. The Court is
informed that the registration for the word mark "India News" has
been granted to the appellant in classes 38 and 41 without any
accompanying disclaimer. If that be so, the appellant would also be
entitled to registration of the device mark in class 41
without any accompanying disclaimer.
11. Solely on this ground, and without entering into the aspect of
whether the mark "India News" was otherwise registrable under
Section 9 of the Trade Marks Act, this appeal is allowed. The
impugned order is quashed and set aside.
12. The Registrar is directed to accord registration to the appellant
of its device mark in class 41 as sought by it. Application
No. 2522479 filed by the appellant accordingly stands allowed.
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Signed By:HARIOM
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13. Mr. Vaidyanathan undertakes to transmit a copy of this order to
the Registrar of Trademarks for necessary compliance.
C.HARI SHANKAR, J
AUGUST 7, 2023
ar
Signature Not Verified
Signed By:HARIOM
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