Recently, Disruptive Health Private Limited (“Appellant”) filed an appeal before the IP Division of the Delhi High Court against an order passed by the Registrar of Trade Marks refusing its application for the mark HEALTHSKOOL, in Class 10, filed on ‘proposed to be used’ basis. The objection raised by the Registrar was under Section 9(1)(b) of the Trade Marks Act, 1999 (the “Act”), citing that the mark HEALTHSKOOL was descriptive of the products falling in Class 10, being, bandages, condoms, surgical, medical, dental and veterinary apparatus and instruments, artificial limbs, eyes and teeth, orthopaedic articles suture materials, etc. The Registrar, while passing the refusal order, cited that, in order to claim exclusivity over a mark, it must consist of some arbitrary or fanciful term, figure, device, or phrase, to constitute a trademark, and its usual or ordinary meaning does not denote or describe goods or services to which they are applied. The Court, while overturning the decision of the Registrar, opined that the Registrar erred in law while applying the standard requirement for registration of marks. The Court emphasized on the general principle of ascertaining distinctiveness, and held that descriptive marks are certainly entitled for registration, provided that the Appellant could establish secondary meaning. Considering the Appellant’s mark as distinctive, the Court held the following – a) The Appellant is the registered proprietor of the word mark HEALTHSKOOL as well as the logo, in classes 3, 5 and 44, and has a right to expand its business to products falling in Class 10 ; b) The Appellant has been using the mark HEALTHSKOOL since the year 2015 and had generated sales of approximately INR 23 crores in 2020-21 ; c) The Appellant has prominently displayed the mark HEALTHSKOOL on its website www.healthskoolpharmacy.com which was registered in May, 2021; d) Just because some portion of the mark may have some reference or indication as to the products or services intended for, the same may not be liable to be rejected straightaway. In such a case, the merits of the marks would have to be considered along with the extent of usage; e) The Appellant is not claiming any exclusive rights in the word ‘health’ per se. Accordingly, the Court set aside the refusal order passed by the Registrar and allowed the application to be published in the trademark journal within the next two months with the condition “No exclusive rights in the word ‘Health’ ”.
DISRUPTIVE HEALTH SOLUTIONS PRIVATE LIMITED V. REGISTRAR OF TRADE MARKS, C.A.(COMM.IPD-TM) 133/2022, Decision dated July 8, 2022