Recently, Modicare Limited (“Appellant”) appealed an order passed by the Registrar of Trade Marks refusing to register its application for the mark ‘SALON PROFESSIONAL’ covering hair care products in Class 3 before the IP Division of the Delhi High Court. One of the grounds for refusal of the application by the Registry was that the mark is descriptive of the goods covered by the application. The Appellant, in support of registration of its mark, claimed that it adopted the mark back in 2003 and had spent huge sums of money in promoting goods under the mark. It also relied on its registration for the mark ‘MODICARE SALON PROFESSIONAL’ dated 2016 to argue that registration of the refused mark should also be allowed.
On perusing the manner in which the mark was used, the court noted that, while the Appellant’s application was for the word mark SALON PROFESSIONAL, it was using the mark in a logo form. The court observed that, since the mark which is in use by the Appellant is a device mark, grant of a word mark, especially, considering the nature of the mark sought to be registered, could result in blocking other businesses from using the words ‘SALON’ and ‘PROFESSIONAL’. The Appellant, however, was willing to modify the application for the word mark to a device mark. Considering the long use of the mark and the registration for the mark ‘MODICARE SALON PROFESSIONAL’, the court directed to advertise the device mark on the conditions that: (a) the device mark will be associated with the prior registration for MODICARE SALON PROFESSIONAL, (b) the word mark will be replaced by the device mark in use pursuant to the Appellant filing the appropriate request at the Registry, and (c) there would be no exclusive rights in the words ‘SALON’ or ‘PROFESSIONAL’.
MODICARE LIMITED vs REGISTRAR OF TRADEMARKS, C.A.(COMM.IPD-TM) 8/2022, Decision dated April 4, 2022