2022 (2) TMI 443 - HC - Indian Laws

Registration of trademark - only ground on which the impugned order refuses registration of the appellant's mark is that it is not distinctive - HELD THAT - The impugned order does not allege that the mark, or any mark deceptively similar thereto, was ever registered, or even in use in respect of goods or services identical or similar to the marks in respect of which registration was sought by the appellant. Nor could it be alleged that the mark AND THEN THERE WERE NONE was descriptive of the services in respect of which its registration was sought by the appellant - The Trade Marks Act, 1999, confers, as a matter of right, the right to register a trademark which does not suffer from any of the infirmities which the Act contemplates. The circumstances in which registration of a mark can be refused, being specifically statutorily delineated in the Trade Marks Act, have to be regarded as exhaustive. Absent any of these circumstances, therefore, a request for registration of a trademark cannot be refused - There is no finding or observation, by the author of the impugned order, that the name AND THEN THERE WERE NONE is not capable of being represented graphically or is incapable of distinguishing the services being provided, or intended to be provided, by the appellant, from those provided or intended to be provided by others. There is no obligation, in law, requiring, mandatorily, the name or other insignia, whereunder goods or services are provided, to be registered under the Trade Marks Act, 1999. Registration of a trademark, however, permits transparency in trade and is also in the interests of the consuming public who would, then be able to identify and distinguish goods and services being provided by one entity from those provided by another. As such, if the trademark is not one, the registration of which is inhibited by any of the provisions of the Trade Marks Act, its registration must be allowed - Essentially, if the mark is distinctive, and is not identical or confusingly or deceptively similar to any earlier mark which is registered or in use from a prior date in respect of similar goods or services, or which results in the passing off, by the applicant, of its goods or services as those of another, registration of the mark is a matter of right. The impugned order is also liable to be set aside, in my view, as being unreasoned. The right to register a mark under which one intends to provide good or services is a valuable right, partaking of the character of Article 19(1)(g) of the Constitution of India. Any decision not to allow registration of a mark has, therefore, to be informed by reasons which should be apparent on the face of the decision - the matter is remitted to the office of the Registrar of Trade Marks with the direction that, if the application of the appellant does not suffer from any other fatal infirmity, the mark AND THEN THERE WERE NONE , as sought by the appellant, be registered under Classes 9, 16 and 41 - appeal allowed by way of remand.

Summary

Issues Involved:
1. Distinctiveness of the trademark "AND THEN THERE WERE NONE".
2. Compliance with the Trade Marks Act, 1999.
3. Right to register a trademark.
4. Reasoning and justification in the impugned order.

Issue-wise Detailed Analysis:

1. Distinctiveness of the Trademark "AND THEN THERE WERE NONE":
The primary issue addressed was whether the trademark "AND THEN THERE WERE NONE" lacked distinctiveness. The impugned order rejected the application on the grounds that the mark lacked distinctiveness and was only proposed to be used, with no substantive evidence of prior use as a trademark. The court, however, found this reasoning flawed, noting that the title of Agatha Christie's well-known novel is inherently distinctive and capable of creating an association with the appellant's services.

2. Compliance with the Trade Marks Act, 1999:
The judgment highlighted that the Trade Marks Act, 1999, provides specific grounds under Sections 9, 11, and 13 for refusing registration of a trademark. These include the mark being devoid of distinctive character, being descriptive, customary in the trade, or likely to deceive the public, among others. The court noted that the impugned order did not allege that the mark "AND THEN THERE WERE NONE" suffered from any of these statutory infirmities. Therefore, the refusal to register the mark was not justified under the Act.

3. Right to Register a Trademark:
The court emphasized that the Trade Marks Act confers the right to register a trademark that does not suffer from statutory infirmities. The definitions of "trade mark" and "mark" under Sections 2(1)(zb) and 2(1)(m) of the Act include names and words capable of being represented graphically and distinguishing goods or services. The court found no indication that the mark in question failed to meet these criteria. The appellant's right to register the mark was thus upheld, given its distinctiveness and lack of conflict with any existing registered marks.

4. Reasoning and Justification in the Impugned Order:
The court criticized the impugned order for being unreasoned and lacking sufficient justification. It underscored that the right to register a trademark is a valuable right akin to the freedom to practice any profession under Article 19(1)(g) of the Constitution of India. Any decision to deny this right must be well-reasoned and apparent on the face of the decision. The impugned order failed to provide adequate reasons, rendering it liable to be set aside.

Conclusion:
The court quashed and set aside the impugned order, directing the Registrar of Trade Marks to register the mark "AND THEN THERE WERE NONE" under Classes 9, 16, and 41, provided there were no other fatal infirmities in the application. The appeal was allowed with no order as to costs.