Recently, the Delhi High Court set aside an order of the Registrar of Trade Marks (“Registrar”) refusing registration of Ticona Polymers, Inc.’s (“Appellant”) mark COOLPOLY on, inter alia, the ground that the mark is a mere combination of two English words COOL and POLY, and is, as such, devoid of any distinctive character.
The court, while arriving at its decision, observed that it is well settled that a mark cannot be dissected into its individual parts, and therefore, examiners are required to examine marks as a whole. The Court further noted that Indian trade mark law embodies the anti-dissection principle in the context of infringement of a trade mark, and the principle would apply, mutatis mutandis, even at the stage of registration of a mark.
As regards the mark in question, the court observed that neither does the word COOLPOLY have any meaning in the English language, nor is it a word of common usage such that it would be rendered incapable of distinguishing the goods of one person from those of another, if used as a trade mark. The court also noted that the Registrar’s order was silent on why the mark is not distinctive. Further, the court held that, had the examiner raised an objection of descriptiveness, even that would not hold water given that COOLPOLY is a coined word, and even if the words COOL and POLY are taken individually, they cannot be held to be descriptive of the goods covered by the Appellant’s application, namely, plastic and carbon moulding materials, etc.
In light of the above, the court while setting aside the Registrar’s order, held that the examiner’s reasoning for refusing the mark is unsustainable in law, and directed the Registrar to ensure that the application for the mark COOLPOLY is advertised in the Journal of Trade Marks.
Ticona Polymers, Inc. v. Registrar of Trade Marks, C.A. (COMM.IPD-TM) 89/2022, order dt. February 28, 2023