M/s. Crest Consulting Rep by v. Senior Examiner of Trade Mar

Trade Marks raised objections under Section 9(1)(a) of the Trade Marks Act, 1999 (the Trade Marks Act). By response dated 12.08.2019, the appellant asserted that the trade mark was coined, designed and adopted by the appellant. The appellant further stated that the trade mark bears no reference to the services provided and that it qualifies for registration as being distinctive. After a hearing on 21.01.2020, the application was rejected by impugned order dated 18.06.2020. Hence this appeal.

2. Learned counsel for the appellant invited my attention to the application. He pointed out that the mark uses the colours red and black and that the text is in stylized English alphabets. As regards use, learned counsel referred to several invoices, including an invoice dated 11.08.2018 which was issued to the appellant for supply of badges and T-shirts bearing the trade mark. Learned counsel also placed for my consideration the invoice dated 27.12.2017, wherein goods such as key-chains and coasters bearing the trade mark were

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ordered from a third party by the appellant. Learned counsel also pointed out that the application for registration of the following mark:

was accepted for advertisement and subsequently registered in favour of the appellant. In these circumstances, learned counsel contended that the impugned order, which is not supported by reasons, is liable to be set aside.

3. In response to these contentions, Mr.N.Ramesh, learned SPC, submitted that a trade mark which designates geographical origin cannot be registered as per Section 9(1)(b) of the Trade Marks Act. On that basis, learned counsel submitted that the impugned order contains no infirmity and does not warrant interference.

4. The appellant has placed on record invoices issued by third parties for the purchase of goods containing the trade mark. Such

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invoices were issued from 27.12.2017. The user affidavit of the appellant is also on record. In the impugned order, the Registrar of Trade Marks, recorded, in relevant part, as under:

"The mark applied for registration is BENGALURU in class 25 in respect of "T-Shirts; Caps". The subject mark is a geographical name and as such it is not capable of distinguishing the goods of one person from those of others. Further noted that the mark designates geographical origin of the goods applied for registration. Hence the mark is objectionable under Section 9 of the Trade Marks Act, 1999. The mark is claimed to used from 22/12/2017. But no affidavit along with the supporting documents submitted to substantiate the user claim. Objections cannot be waived."

5. From the above extract, it is clear that a conclusion was recorded that no affidavit along with supporting documents was submitted by the appellant to substantiate the user claim. This

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conclusion was drawn by disregarding the user affidavit and the invoices placed on record by the appellant. Therefore, the impugned order is unsustainable.

6. Section 9(1)(b) of the Trade Marks Act prohibits the registration of a mark which exclusively designates, inter alia, geographical origin. In this case, the relevant mark is written in stylized fonts in two colours in English alphabets. The trade mark is applied in relation to goods which bear no apparent relationship with such trade mark. By taking into account the aforesaid and the evidence of use provided by the appellant, the application shall be accepted for advertisement subject to the incorporation of the limitation that no exclusive right shall be claimed by the appellant over the word BENGALURU and that the claim would be limited to the manner and style in which the trade mark is written.

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7. The impugned order is set aside and (T)CMA(TM)/99/2023 is allowed on the above terms by making it clear that this order will not be binding on opponents, if any.

04.10.2023

rna Index : Yes / No Internet : Yes / No Neutral Citation: Yes/No

SENTHILKUMAR RAMAMOORTHY,J

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rna

(T)CMA(TM)/99/2023 (OA/39/2020/TM/CHN)

04.10.2023

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