Dated: 20.09.2023 vs The Registrar Of Trade Marks
2023 Latest Caselaw 12794 Mad

    2023:MHC:4270


                                                                               (T)CMA(TM)/92/2023

                                  IN THE HIGH COURT OF JUDICATURE AT MADRAS

                                                DATED: 20.09.2023

                                                  CORAM:
                                  THE HONOURABLE MR.JUSTICE SENTHILKUMAR
                                              RAMAMOORTHY

                                               (T)CMA(TM)/92/2023
                                              (OA/20/2020/TM/CHN)


                     FC Madras Trust
                     Rep. by its Trustee K.Ananth
                     A-7, Terraspace Blooming Dale,
                     Plot No.107, Jeyachandran Nagar,
                     Medavakkam, Chennai – 600 100.                         ...Appellant

                                                          -vs-

                     1.The Registrar of Trade Marks,
                       The Trade Marks Registry,
                       IP Office Building, G.S.T. Road,
                       Guindy, Chennai – 600 032.

                     2.The Senior Examiner of Trade Marks,
                       The Trade Marks Registry,
                       IP Office Building,
                       G.S.T. Road, Guindy,
                       Chennai – 600 032.                                   ...Respondents

                     PRAYER: Transfer Civil Miscellaneous Appeal (Trademarks) filed under
                     Section 91 of the Trade Marks Act, 1999, praying to set aside the impugned
                     order of the respondent passed on 27th August, 2019 and statement of

                     1/8



https://www.mhc.tn.gov.in/judis
                                                                                      (T)CMA(TM)/92/2023

                     grounds of decision of the same received by us on 3rd October, 2019 in
                     correspondence No.TLA/200/27/09/2019               against registration   of the
                     Trademark 'FC Madras' with Application No.3821512 in Class 16.

                                        For Appellant     : Mr.R.Sathish Kumar
                                                            for M/s.Altacit Global

                                        For Respondents : Mr.P.G.Santhosh Kumar
                                                          Senior Panel Counsel


                                                          JUDGMENT

The appellant assails an order dated 27.08.2019 by which Application

No.3821512 for registration of word mark "FC MADRAS" was refused.

The appellant applied for registration of the mark extracted above on

02.05.2018 in Class 16 pertaining to printed publications, books,

newspapers, periodicals and journals. By examination report dated

07.06.2018, the Registrar of Trade Marks raised an objection under Section

9(1)(a) of the Trade Marks Act, 1999 (the Trade Marks Act), on the ground

that the mark is a geographical name and, as such, incapable of

distinguishing the goods of one person from those of others. The appellant

replied to the examination report and pointed out that the mark adopted by

the appellant has no connection with the geographical origin of the goods

https://www.mhc.tn.gov.in/judis (T)CMA(TM)/92/2023

and that such mark is coined and capable of distinguishing the goods of the

appellant from those of others. After a hearing on 20.06.2019, the

application was rejected on 27.08.2019 by drawing reference to Section

9(1)(a) of the Trade Marks Act. The grounds of decision were provided on

24.09.2019. In the grounds of decision, it was reiterated that the mark is a

common geographical name which is incapable of distinguishing the goods

of one person from those of others. Hence, this appeal.

2. Learned counsel for the appellant invited my attention to the

certificates of registration obtained by the appellant for the identical mark

"FC MADRAS" in Classes 35, 36 and 41. He also pointed out that the mark

was used extensively by drawing reference to invoices issued by the

appellant. By further submitting that the appellant is a football club, he

contended that the mark is not descriptive of the goods in respect of which

registration was applied for. By inviting my attention to the Manual of

Trade Marks, Practice and Procedure, published on 10.03.2015, learned

counsel submitted that geographical names, which are not likely to be taken

as indicating the origin of the goods, may be accepted. For the above

https://www.mhc.tn.gov.in/judis (T)CMA(TM)/92/2023

reasons, he concluded his submissions by stating that the impugned order is

unsustainable.

3. In response to these contentions, Mr.P.G.Santhosh Kumar, learned

Senior Panel Counsel, submitted that the mark contains the word 'Madras',

which is a common geographical name. According to him, such

geographical name cannot be registered as a trade mark under Section

9(1)(a) of the Trade Marks Act.

4. The impugned order merely draws reference to Section 9(1)(a) of

the Trade Marks Act as the reason for refusal of the application. The

grounds of decision also do not contain any reasons apart from the

conclusion that the mark is a common geographical name and is

consequently incapable of distinguishing the goods of one person from

those of others.

5. From the application of the applicant, it is evident that the

application was for registration of the word mark "FC MADRAS". The

https://www.mhc.tn.gov.in/judis (T)CMA(TM)/92/2023

mark should be considered as a whole and not by splitting it into its

constituents. Under Section 9(1)(a) of the Trade Marks Act, a mark is liable

to be refused registration if it is found devoid of distinctive character. The

appellant seeks registration of the above mentioned mark in Class 16 in

relation to printed publications, books, newsletters and the like. The

appellant's mark, when viewed as a whole, is certainly not descriptive of the

goods in relation to which the mark is applied. As pointed out by learned

counsel for the appellant, even the Manual of Trade Marks, Practice and

Procedure, does not state that geographical names cannot be registered. The

guidance provided therein appears to be that such names cannot be

registered if they are descriptive of the goods or services in relation to

which such marks are applied.

6. The appellant has also provided evidence of the registration of the

identical mark in about 3 classes. When the mark was not considered to be

descriptive of the goods covered by the said registrations, the same mark

cannot be considered to be descriptive of the goods covered by the present

application. Therefore, the objection under Section 9(1)(a) of the Trade

https://www.mhc.tn.gov.in/judis (T)CMA(TM)/92/2023

Marks Act is untenable. Because the order contains no reason for rejection

of the application, other than the reference to Section 9(1)(a), the order is set

aside. In the facts and circumstances outlined above, the application is liable

to be accepted for advertisement subject to the condition that no exclusive

right can be claimed over the word 'Madras' when used separately.

7. For the above reasons, the appeal is allowed on the terms indicated

above by setting aside the impugned order. It is made clear, however, that

this order will not be binding on opponents, if any.

20.09.2023 Index:Yes Speaking Order Neutral Citation:Yes hvk

https://www.mhc.tn.gov.in/judis (T)CMA(TM)/92/2023

To

1.The Registrar of Trade Marks, The Trade Marks Registry, IP Office Building, G.S.T. Road, Guindy, Chennai – 600 032.

2.The Senior Examiner of Trade Marks, The Trade Marks Registry, IP Office Building, G.S.T. Road, Guindy, Chennai – 600 032.

https://www.mhc.tn.gov.in/judis (T)CMA(TM)/92/2023

SENTHILKUMAR RAMAMOORTHY,J.

hvk

(T)CMA(TM)/92/2023 (OA/20/2020/TM/CHN)

20.09.2023

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