In the matter of, Dhiraj Kumar Nanda v. The Registrar Of Trade Mark & Anr.  [C.A.(COMM.IPD-TM) 7/2023], a single judge [Justice Prathiba M. Singh] of the High Court of Delhi, vide order dated July 3, 2023, affirmed that placing the notice of the website is not sufficient and notice should be communicated to the parties in writing.

Rule 50(1) of the Trade Marks Rules, 2017 (‘Rules’) states that “(1) The Registrar, after the closure of the evidence, shall give notice to the parties of the first date of hearing. The date of hearing shall be for a date at least one month after the date of the first notice.” The nature in which the registrar shall ‘give notice’ of hearing to respective parties is not certain.

The Appellant’s application for the mark NUTRILIFE in Class 5 was ordered abandoned vide TM Office’s order dated September 23, 2022, in an opposition proceeding. During the course of the opposition proceeding, two hearings were scheduled in the year 2022. The Appellant filed the present appeal against the abandonment order, contesting that it did not receive any hearing notices in the matter and thus could not defend its position for its trademark.

The Respondent submitted that the hearing notice was received by the Opponent. However, it was not disputed that the hearing notice was not issued to the Appellant.

The court placed reliance on the judgement in Institute of Cost Accountants v. Registrar of Trade Marks 2013 SCC OnLine Bom 362 stating that, “The respondent was bound to communicate any objection or proposal in writing to the applicant.…placing the notice of the website does not constitute compliance with that Rule 38(4) of the said Rules. The respondents have not indicated anything that obliged the petitioner to inspect the website on a daily basis”. The Court while allowing the appeal held that, “…As per the settled legal position, the Registrar is required to give notice to the parties, of the opposition hearing…the impugned order abandoning the application is set aside. A fresh date of hearing shall be communicated by the Registrar of Trademarks to the parties, on which the date the matter shall be heard and orders shall be passed in the opposition in accordance with law….”

Disclaimer: Views, opinions, interpretations are solely those of the author, not of the firm (ALG India Law Offices LLP) nor reflective thereof. Author submissions are not checked for plagiarism or any other aspect before being posted.

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In the matter of Kamdhenu Ltd. v The Registrar of Trademarks [C.A.(COMM.IPD-TM) 66/2021], Single Judge [Pratibha M. Singh, J.] of the High Court of Delhi, vide judgment dated July 6, 2023, allowed an appeal against the refusal order of the Registrar of Trademarks and held that documentary evidence without an affidavit can establish the well-known status of the mark, as long as there is sufficient evidence.

Rule 124(1) of Trademarks Rules, 2017 (‘Rules’) states “Any person may, on an application in Form TM-M and after payment of fee as mentioned in First schedule, request the Registrar for determination of a trademark as well-known. Such request shall be accompanied by a statement of case along with all the evidence and documents relied by the applicant in support of his claim.” The question that arises is whether the relevant ‘evidence and documents’ in support of the claim for well-known status are required to be filed on an affidavit.

The Appellant contended that it is not mandatory to file the evidence only by way of an affidavit under Rule 124. The Appellant also relied upon other trade mark rules and contended that whenever the evidence is required to be placed on an affidavit, the provision of Trademarks Act, 1999 or Trade Mark Rules, 2017 specifically states so.

The Respondent submitted that given the nature of the evidence required, it is implicit that the same must filed by way of an affidavit, and the non-filing of an affidavit would in effect mean that the same cannot be considered by the Registrar.

The Court observed that “Rule 124 of the 2017 Rules uses the word “evidence and documents”. The same could also include affidavits by way of evidence and other documents. However, it cannot be held that an affidavit would be mandatory so long as there is sufficient evidence. …”.  Allowing the appeal, the court opined that “...in order for a determination of well-known status of a trademark, affidavit by way of evidence cannot be held to be a mandatory requirement for grant of well- known status under the 1999 Act and the 2017 Rules. However, documentary evidence would be required…”

Disclaimer: Views, opinions, interpretations are solely those of the author, not of the firm (ALG India Law Offices LLP) nor reflective thereof. Author submissions are not checked for plagiarism or any other aspect before being posted.

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In the matter of Ten Events and Entertainment vs Novex Communication Private Limited & Ors [2023/DHC/003269], Single Judge [C. Hari Shankar, J.] of High Court of Delhi vide judgment dated May 12, 2023 in a suit for permanent injunction held that the social festivities associated with marriage need not partake religious color in order to be exempted from copyright infringement.

Section 52(1)(za) of the Copyright Act, 1957 (the Act) exempts from the purview of copyright infringement, “…a sound recording in the course of any bona fide religious ceremony or an official ceremony held by the Central Government or the State Government or any local authority.” The explanation of the section reads that “For the purpose of this clause, religious ceremony including a marriage procession and other social festivities associated with a marriage”. The question that arises is whether the ‘social festivities’ associated with marriage must be religious in nature to qualify as bona fide religious ceremonies?

The Plaintiff contended that Section 52(1) (za) of the Act absolutely exempts playing of sound recordings in wedding ceremonies and festivities associated therewith from the scope and ambit of copyright infringement. The plaintiff also submitted that “social festivities associated with marriage”, as contained in the explanation of the section refers to all events surrounding the procession of marriage and other social festivities associated with the marriage would be included therein.

The Defendant argued that the “wedding ceremonies” to which the explanation to Section 52(1)(za) alludes, have to partake of the colour of the religious ceremonies. It was also submitted that the kind of songs over which Defendant holds copyright are not of the kind which are played in bona fide religious ceremonies.

The High Court observed that “it is not possible to accept the contention that the reference to a religious ceremony, as contained in Section 52(1)(za), should also percolate to its Explanation. Once the Explanation includes, in the expression “religious ceremony”, for the purposes of Section 52(1)(za), a marriage procession and other social festivities associated with the marriage, every marriage procession, and all social festivities associated with the marriage would, ipso facto, be deemed to be a “religious ceremony”. It is not necessary that the marriage procession, or the associated social festivities, partake of any religious character.”

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In the matter of Institut European D. Admnistration Des Affaires, Insead, Association v. Fullstack Education Private Limited and Anr [2023:DHC:3524], a single judge [Justice C. Hari Shankar] of the High Court of Delhi, vide order dated May 17, 2023, directed that a phonetic search should also be conducted by the Trade Mark Registry during the preliminary examination of an application.

Rule 33(1) of the Trade Marks Rules, 2017 (‘Trade Marks Rules’) states that “the Registrar shall cause the application to be examined as per provisions of the Act, wherein a search shall also be conducted amongst the earlier trademarks, registered or applied for registration...”  The rule does not specify the nature of ‘search’ that shall be conducted by the Registrar during the examination of the application.

The Petitioner filed a rectification petition against the Respondents’ mark INSAID (Device) based on the alleged deceptive similarity with its earlier mark INSEAD (Device). The Petitioner contended that the mark was registered in violation of Rule 33 of the Trade Marks Rules as no phonetic search was conducted during the examination of Respondents’ application for the mark INSAID. The Petitioner submitted that INSEAD turns as one of the suggested similar marks in the phonetic search.

Pursuant to the Court’s direction, the Registrar of Trade Marks placed on record the result of the preliminary search, which contained only ‘Wordmark’ search, the search did not suggest Petitioner’s INSEAD mark as similar. The Respondent contended that failure to conduct a phonetic search at the initial stage of examination of the application for registration of the marks, does not fatally imperil the registration once granted.

The Court observed that, “… neither Counsel is able to draw my attention to any fixed guideline which envisages the nature of the searches which are required to be conducted when an application is submitted for registration of a mark, it is not possible for me to invalidate the registration of the respondents’ INSAID mark on the sole ground that the initial search under Rule 33 of the Trade Marks Rules, was not properly conducted….”. However, in order to avoid such confusion in future cases, the Court while allowing the petition directed that, “…where an application is submitted for registration of a mark which involves a word, then, even at the preliminary stage, a word mark search as well as a phonetic search should be conducted…”

Disclaimer: Views, opinions, interpretations are solely those of the author, not of the firm (ALG India Law Offices LLP) nor reflective thereof. Author submissions are not checked for plagiarism or any other aspect before being posted.

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In the matter of Abu Dhabi Global Market v. The Registrar Of Trademarks [2023:DHC:3476], a single judge bench [Justice C. Hari Shankar] of High Court of Delhi, vide order dated May 18, 2023, allowed an appeal against the refusal order of the Registrar of Trademarks and held that a trade mark application for a composite mark cannot be refused merely on the ground that a part of the mark may be indicative of the geographical origin of goods or services for which the mark is applied for. 

Section 9(1)(b) of the Trade Marks Act 1999 (‘Act’) provides an absolute ground for refusal of trademarks “which consist exclusively of marks or indications which may serve in trade to designate the kind, quality, quantity, intended purpose, values, geographical origin or the time of production of the goods or rendering of the service or other characteristics of the goods or service shall not be registered”. The Act does not specify the nature of ‘indications’and so the question arises whether use of geographical names as a part of composite trademarks itself qualifies the entire mark as an indication capable of designating the origin of the goods or services?

The Appellant contended that inclusion of the geographical name “Abu Dhabi” does not render the composite mark   incapable of distinguishing the goods or services of one person from those of others owing to the distinctiveness of the already registered device element . Further, it is submitted that the Act does not proscribe the inclusion of a name of a place in a composite mark.

The Respondent contended that the geographical name “Abu Dhabi” forms a prominent part of the composite mark and therefore lacks distinctiveness.

The court while observing that, “Section 17 of the Trade Marks Act which forbears claiming of exclusivity in respect only of part of a registered trade mark.” held that “It is only if the entire mark exclusively falls within one of the excepted categories envisaged by Section 9(1)(b) that the registration of the mark can be treated as statutorily proscribed.” [Emphasis Supplied by the Court].Allowing the appeal, the Court opined that “Composite marks, therefore, stand ipso facto excluded from the scope of Section 9(1)(b), even if part of such marks consists of marks or indications which serve, in trade, to designate the geographical origin of the goods or services in respect of which the mark is registered.”.

Disclaimer: Views, opinions, interpretations are solely those of the author, not of the firm (ALG India Law Offices LLP) nor reflective thereof. Author submissions are not checked for plagiarism or any other aspect before being posted.

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