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.”.

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In the matter of M/S V-Guard Industries Ltd v. The Registrar of Trademarks & Anr. [C.A.(COMM.IPD-TM) 39/2022], Single Judge [C. HARI SHANKAR, J.] of the High Court of Delhi, via judgment dated January 06, 2023, allowed the appeal against an order passed by the Registrar of Trade Marks on August 30, 2018, declaring the opposition filed by the Opponent (Appellant) as abandoned on the ground of delay in filing of evidence in support of opposition. The Single Judge interpreted the term ‘leave with the Registrar’ provided under Rule 45 (1) of Trade Mark Rules, 2017 in a broad connotation by observing that the procedural provisions cannot be interpreted so rigidly that they eviscerate the rights of the citizens and directed the Registrar (Respondent) to take on record, the evidence filed by the Appellant via courier.

Rule 45(1) of the Trade Marks Rules, 2017 provides that – “Within two months from service of a copy of the counterstatement, the opponent shall…leave with the Registrar, such evidence by way of affidavit as he may desire to adduce in support of his opposition…”. However, the expression “leave with the Registrar” is nebulous and the question that arises is what would be considered as “left with the Registrar”

In the present case, the Appellant’s attempts to upload its Evidence within the original deadline were unsuccessful due to the Respondent’s website being non-functional. However, the Appellant sent its Evidence to the office of the Respondent via courier the very next day. The courier containing the Appellant’s evidence was received by the Respondent 3 days beyond the original deadline and subsequently, the Respondent had deemed the Opposition as abandoned. The Appellant stated that the delay was the result of a technical issue with the Respondent’s website, because of which the documents were sent to the office of the Respondent by courier the next day. 

The court set aside the impugned order passed by the Respondent abandoning the Opposition and observed that the term ‘leave with the Registrar’ should be interpreted in a broad connotation and stated that “What Rule 45(1) requires is that the evidence must be “left with the Registrar”. Where the statute is ambiguous, the benefit of ambiguity has to go to the citizen. This would be especially so where the statute confers a valuable commercial right on the citizen. It cannot be gainsaid that, having submitted the notice of opposition…the tendering of evidence in support of the opposition was a valuable commercial right which enured in favor of the opponent/appellant.”

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In the matter of Vivek Purwar and Ors. v. Hari Ram and Sons, [RFA-IPD 4/2022, RFA-IPD 5/2022 and CM 96-99/2022], a Single Judge [Navin Chawla, J.] of the Delhi High Court, vide judgment dated November 2, 2022, held that merely because a party to the suit, in the course of their business, has issued advertisements, which may have a spill over circulation within its jurisdiction, would not vest the Court with the requisite territorial jurisdiction to entertain the suit of trade mark infringement and passing off.

Section 134 (2) of the Trade Marks Act, 1999 states that “…a “District Court having jurisdiction” shall… include a District Court within the local limits of whose jurisdiction, at the time of the institution of the suit or other proceeding, the person instituting the suit or other proceeding or, where there are more than one such persons, any of them actually and voluntarily resides or carries on business or personally works for gain.” The question that therefore arises is whether spill over advertisement of a mark within the local limits of a court constitutes ‘carrying on business’ for conferring jurisdiction upon a Court.

The present suit is a cross-appeal challenging the territorial jurisdiction of the learned Tiz Hazari Courts, Delhi to entertain and try the suit. The Appellant-Defendant contended that the learned Trial Court proceeded to pass a decree in favour of the Respondent-Plaintiff when the learned Court did not have the territorial jurisdiction try the suit. The Respondent-Plaintiff contended that solicitation of a business is an important part of the cause of action as this expresses an intention to use the mark in Delhi, and therefore doing so, within the territorial limits of Delhi, would confer jurisdiction in Delhi. The Appellant-Defendant submitted that its trademarks were advertised in print and electronic media vide newspapers and television channels that targeted only viewers in Uttar Pradesh, and therefore cause of action does not arise within the jurisdiction of Delhi.

The Court observed that “such an advertisement cannot vest jurisdiction in a Court located at Delhi, as the said advertisements were not intended for the customers at Delhi”.  The Court held that spill-over advertisement appearing in print and electronic media by itself would not confer any jurisdiction on the Court, since the parties are admittedly carrying on their business only within the State of Uttar Pradesh. Therefore, the Court set aside the decree passed by the learned Trial Court.

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In the matter of Milaap Social Ventures Pvt. Ltd. & Anr. V. Google India Pvt. Ltd. & Anr. [W.P. (C) No. 6220/2022, the Single Judge [Sachin Shankar Magadum, J.] of the High Court of Karnataka, by decision dated November 23, 2022, set aside the order passed by the Trial Court and held that the Petitioner is entitled to amend the plaint to incorporate a prayer of relief against trademark infringement in a suit for passing-off.

Order 6 Rule 17, Code of Civil Procedure (‘CPC’) provides, “The Court may at any stage of the proceedings allow either party to alter or amend his pleadings in such manner and on such terms as may be just and …shall be made as may be necessary for the purpose of determining the real questions in controversy…”. The question is whether the prayer in a plaint be amended to seek an additional relief if the facts surrounding the cause of action remain the same.  

The Petitioner had sought a perpetual injunction against the Respondents from passing off the Petitioner’s trademark ‘MILAAP’ as a keyword to divert traffic to the Respondent’s website. During the pendency of the suit, the Petitioner’s mark ‘MILAAP’ was registered. Consequently, the Petitioner filed an application under Order 6 Rule 17 of the CPC to amend the plaint to include trademark infringement against the Respondents in the prayer. However, the Trial Court had rejected the application on the ground that the subsequent event of registration would give rise to a new cause of action, and that it would cause serious prejudice to the Respondents.

In the present petition against the Trial Court’s order, the Petitioner argued that the decision of the Trial Court to reject the application under Order 6 Rule 17 of CPC solely on the basis that the Plaintiff can file a separate suit is patently erroneous, as the ground on which the suit is based would remain the same. The Respondents contended that the Petitioner cannot subsequently convert a suit filed under common law remedy to a statutory suit under the Trade Marks Act.

The High Court rejected the Respondents’ contention and held that “If the cause of action for infringement and passing off actions are substantially identical and same in law and both the reliefs are virtually based on the same fundamental idea, and if plaintiffs intend to incorporate the relief relating to infringement of trademark, that would not fundamentally change the character of the suit and it would only be in the nature of alternative relief.”

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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