Whether the Trademark can be dissected while checking its eligibility under section 9(1) during examination?

This question was answered by the Delhi High Court in the case of Ticona Polymers v. Registrar of Trade Marks, 2023 decided on 28^th February 2023.

Facts of the Case:

The appellant applied to register “COOLPOLY” as a mark for plastic and carbon molding materials and molded heat sinks under class 1 and class 9. The Senior Examiner rejected it under Sections 9(1)(a) of the Trade Marks Act, 1999. The appellant appeals. The FER objected that COOLPOLY was not inherently distinctive and had no secondary meaning. It said COOLPOLY was a combination of COOL and POLY, which were descriptive of the goods. The impugned order was unclear whether it found COOLPOLY or COOL and POLY descriptive.

The applicant preferred an appeal against the impugned order, in the Delhi High Court, under section 91 of the Trademarks Act, 1999.

Appellant’s Contentions:

The Appellant’s Counsel contends that the principle that a mark should not be dissected into separate parts while assessing its eligibility for registration is well established. Although Section 17(1) of the Trademarks Act legally enshrines this anti-dissection principle in the context of infringement proceedings, the principle would, mutatis mutandis, also apply at the stage when the mark is evaluated for its eligibility for registration because it is the registration itself that confers the benefits that follow, including protection against infringement.

Issue of the Case:

Whether while examining the eligibility of a mark, the examiners of the Trademark Registry allowed to dissect the trademark into parts so as to check its distinctiveness under section 9 of the Act?

Respondent’s Contentions:

Respondent’s Counsel submitted that the law was well settled that, a mere combination of two known word or abbreviation thereof would not be an invented word, even if the combination had not been in use before, if to the eyes or ear the same idea would be conveyed as by the words in its ordinary form, as decided in the cases of “E. Griffiths Hughes Ltd. v. Vick Chemical Co.¹ AND A.R. Khaleel And Sons v. Registrar of Trade Marks In India²”

Related Provisions of the Act:

17. Effect of registration of parts of a mark. –

(1) When a trade mark consists of several matters, its registration shall confer on the proprietor exclusive right to the use of the trade mark taken as a whole.

(2) Notwithstanding anything contained in sub-section (1), when a trade mark—

(a) contains any part –

(i) which is not the subject of a separate application by the proprietor for registration as a trade mark; or

(ii) which is not separately registered by the proprietor as a trade mark; or

(b) contains any matter which is common to the trade or is otherwise of a non-distinctive character,

the registration thereof shall not confer any exclusive right in the matter forming only a part of the whole of the trade mark so registered.

 9. Absolute grounds for refusal of registration. –

(1) The trade marks –

(a) which are devoid of any distinctive character, that is to say, not capable of distinguishing the goods or services of one person from those of another person…… shall not be registered.

Observations of the Delhi High Court:

A mark must be seen as a whole for registration. Section 17(1)2 bars dissecting it in infringement cases. This applies to registration too, as it gives protection. COOLPOLY has no meaning in English. It is not a common or uncommon word. It can distinguish goods as a trade mark. The order wrongly mixes lack of distinctiveness (Section 9(1)(a)) and descriptiveness (Section 9(1)(b)). Section 9(1)(a) applies to common English words that cannot distinguish goods. They can be registered if they have acquired distinctiveness or are well known trade marks (Section 2(1)(zg)3). The order does not say COOLPOLY is a common English word. It has no meaning. It does not cite any similar mark or reason why COOLPOLY cannot distinguish goods.

COOLPOLY is not descriptive of the goods for registration. Neither are “COOL” or “POLY” individually. The order does not explain how they are descriptive or lack distinctive character. The order does not address Section 9(1)(a) basics. It is unreasoned, as it only says “COOL” and “POLY” are descriptive without proof.

Decision of the Delhi High Court:

The Court held that:

1. COOLPOLY could not, for examining distinctiveness, be dissected into COOL and POLY,
2. COOLPOLY was not a word of common English usage,
3. COOLPOLY, if used as a mark by one person was, therefore, perfectly capable of distinguishing the goods or services of that person, in respect of which the mark was used, from the goods and services of others,
4. the prohibition against registration contained in Section 9(1)(a) would not, therefore, apply,
5. neither COOLPOLY, nor COOL and POLY individually seen, were descriptive of the goods in respect of which the appellant sought registration of the COOLPOLY mark and
6. the prohibition against registration contained in Section 9(1)(b) would also, therefore, not apply and accordingly court quashed the impugned order and remand the application to the Registrar for advertisement and further action.

Citation:

SCC OnLine Del 1234

2023/DHC/001489

¹AIR 1959 Cal 654

²AIR 1963 Mys 122