Recently, the Delhi High Court, while setting aside a refusal order of the Trade Marks Registry, Delhi, came down heavily on the Assistant Examiner for refusing the trade mark application without a comprehensible reasoning.
An application to register the mark, ABU DHABI GLOBAL MARKET, bearing Application No. 3184380 (“Impugned Mark”), filed by ABU DHABI Global Market (“Appellant”), was examined, and subsequently refused on the grounds that the Impugned Mark is neither coined nor invented; evidence of use was not submitted to establish distinctiveness of the mark by filing of affidavit; and ABU DHABI being a geographical name, the Impugned Mark as a whole is non-distinctive and cannot be monopolised.
The Court, in the appeal filed by the Appellant, opined that distinctiveness is, undoubtedly, a pre-requisite for registration of a mark, but inventiveness is not. As regard the second ground, the Court noted that evidence of use of the mark is not required to establish distinctiveness since the law allows registration of marks on a proposed to be used basis. The Court also concurred with the Appellant’s submission that since device element of the Impugned Mark already stands registered in favour of the Appellant, the Impugned Mark cannot lose its distinctiveness by addition of the words “ABU DHABI GLOBAL MARKET” below it. The court also noted that, distinctiveness of any mark would need to be assessed in line with the commonness of use of such mark or any similar mark by other proprietors, and, in the present case, after finding that the Impugned Mark is not used by anyone else, held the Impugned Mark to be distinctive.
As regard the third ground of refusal, the Court held that Section 9(1)(b) of the Act only bars marks which consists exclusively of marks or indications which designate the geographical origin of the goods and composite marks which merely contains name of a geographical area are not barred.
The Court, accordingly, expressed its disagreement with the reasoning of the Assistant Examiner and set aside the refusal order. The Court also remanded the application back to the Registry to advertise the mark in the Trade Marks Journal.
C.A.(COMM.IPD-TM) 10/2023 ABU DHABI GLOBAL MARKET Vs. THE REGISTRAR OF TRADEMARKS, DELHI