Madras High Court

Dated: 18.08.2023 vs The Registrar Of Trade Marks on 18 August, 2023

    2023:MHC:3818




                                  IN THE HIGH COURT OF JUDICATURE AT MADRAS
                                               DATED: 18.08.2023
                                                     CORAM
                        THE HONOURABLE MR.JUSTICE SENTHILKUMAR RAMAMOORTHY
                                              (T)CMA(TM)/88/2023
                                              (OA/16/2020/TM/CH)

                     American Heart Association, INC,
                     7272 Greenville Ave., Dallas,
                     Texas 75231, US                                            ... Appellant
                                                    -vs-

                     The Registrar of Trade Marks,
                     Trade Marks Registry,
                     Chennai.                                                 ... Respondent

                     PRAYER: Transfer Civil Miscellaneous Appeal (Trademarks) filed

                     under Sections 91 of the Trademarks Act, 1999, praying that the order

                     issued by the Respondent dated 24 September 2019 and received by

                     us on 03 October 2019 be set aside and the Application No.3970773

                     for the Trademark




                     in classes 35, 36 and 41 be allowed to proceed to registration.



                     1/10


https://www.mhc.tn.gov.in/judis
                                       For Appellant    : Mr.R.Rajesh
                                                          for M/s.De Penning and De Penning

                                       For Respondent : Mr.A.R.Sakthivel, SPC

                                                        **********

                                                       JUDGMENT

The appellant assails an order dated 24.09.2019 by which

Application No.3970773 for registration of the device mark

was refused by citing Section 9(1)(a) of the Trade Marks Act, 1999

(the Trade Marks Act).

2. The appellant is a company incorporated in Texas, United

States of America, under the name and style of American Heart

Association, Inc. The appellant filed an application on 11.10.2018 for

registration of the device mark extracted above in classes 35, 36 and

https://www.mhc.tn.gov.in/judis 41 by way of a multi-class application. Upon examination, by

communication dated 16.11.2018, the Registrar of Trade Marks raised

an objection under Section 9(1)(a) of the Trade Marks Act on the

ground that the mark is non distinctive and, consequently, incapable

of distinguishing the services of the appellant from those of others.

In response thereto, the appellant submitted a reply dated 14.01.2019.

In relevant part, the reply is as under:

"With regard to the objection under Section 9: it is submitted that the subject trademark is represented in a stylized and composite form (along with a logo), hence on the whole inherently distinctive. The nature of services is highly specific to the field of Cardiology and with public interest as the core objective. The main activity under the said trade mark is to launch a movement to train the general public on first aid and CPR and to sensitize the need to act quickly on a person suffering from cardiac arrest. The source of the services offered will be well explained and known to the stake holders and the general public. Hence, the subject trade mark will not be perceived to be descriptive or non distinctive. Further, the said applicant is already active in India offering the relevant service under the subject trade mark, a snap shot from the website www.heartandstroke.in is enclosed herewith for your reference."

https://www.mhc.tn.gov.in/judis

3. Pursuant to a personal hearing, the order dated 23.07.2019

was issued. In relevant part, the order reads as under:

"*sonu Applicant/Advocate/Agent appeared before me and made his submissions. I have heard arguments, gone through the records and passed the following Order.

*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."

4. Since no reasons were discernible from the order, the

appellant requested for the grounds of decision as per Rule 36(1) of

the Trade Marks Rules, 2017. In response, by communication dated

24.09.2019, the purported grounds of decision were provided. In

relevant part, the grounds of decision are as under:

"*Adv. sonu appeared and submitted that mark is distinct and not descriptive heard, examine the application mark has direct reference to the quality and characteristics of the goods or

https://www.mhc.tn.gov.in/judis services mark is highly descriptive for the applied goods hence not distinctive reply is not satisfactory hence application is refused under Section 9(1)(a) of the act."

5. Learned counsel for the appellant provided an overview of

the facts by taking me through the documents adverted to above. He

also placed for consideration the registrations obtained in respect of

near-identical device marks in various jurisdictions. He further

pointed out that the appellant obtained registration for a composite

mark comprising an identical device albeit with the words 'American

Heart Association' instead of Heart and Stroke Foundation India a

subsidiary of American Heart Association. Learned counsel further

contended that the explanation of the appellant with regard to the

distinctive nature of the composite mark was not taken into

consideration while passing the impugned order. For all these

reasons, he contends that the impugned order is liable to be set aside

and that directions be issued for the advertisement of the mark.

https://www.mhc.tn.gov.in/judis

6. In response to these contentions, Mr.A.R.Sakthivel, learned

counsel, submits that the composite mark consist of the words 'Heart

and Stroke Foundation', which are not only descriptive but

specifically descriptive of the nature of services provided by the

appellant. He submits that the appellant cannot be permitted to

appropriate these words and prevent other stake holders in the

medical sector from using these words. Therefore, he submits that

the impugned order does not call for interference.

7. On examining the impugned mark, it is evident that it is a

composite mark with a prominent device. The said device consists of

a heart in black colour, a flaming torch in white colour with a small

flame in white colour enclosed by a larger flame in black colour. The

words “Heart and Stroke Foundation India a subsidiary of American

Heart Association” are used along with this device. At the time of

application, the composite mark was proposed to be used in India.

https://www.mhc.tn.gov.in/judis However, while responding to the examination report, the appellant

has stated that the mark is being used in India in relation to services

provided by the appellant. The contention that the appellant has

obtained a composite mark registration containing an identical

device, albeit with the words 'American Heart Association' is not

denied by the respondent. The registrations obtained by the

appellant for near identical marks in multiple jurisdictions are on

record and learned counsel for the appellant cited the decision in

Dubai Islamic Bank v. Union of India, order dated 04.12.2019 in

W.P.No.12749 of 2019, particularly paragraph 12 thereof, to

substantiate the contention that registrations obtained overseas may

be taken into consideration by the Registrar of Trade Marks.

8. In respect of the concern voiced by Mr.A.R.Sakthivel, with

regard to the descriptive nature of the words 'Heart and Stroke

Foundation', it is pertinent to draw reference to Sub-Section 4 of

Section 18 of the Trade Marks Act, which is as under:

https://www.mhc.tn.gov.in/judis "4. Subject to the provisions of this Act, the Registrar may refuse the application or may accept it absolutely or subject to such amendments, modifications, conditions or limitations, if any, as he may think fit."

In view of sub section 4, it is always possible for the Registrar of

Trade Marks to impose conditions or limitations, wherever

appropriate.

9. The order dated 23.07.2019 is entirely bereft of reasons. As a

quasi-judicial authority, notwithstanding Rule 36(1) of the Trade

Marks Rules, it is incumbent upon the Registrar of Trade Marks to

engage with the submissions of the applicant and specify reasons for

not agreeing with such submissions. It is wholly insufficient to

merely record conclusions ipse dixit. Even the purported grounds of

decision merely recorded conclusions and did not set out reasons for

rejecting the response of the appellant to the examination report.

Therefore, the order dated 23.07.2019 and the grounds of decision are