M/s. Anjay Bansal v. Assistant Registrar of Trade

Factual and Procedural Background

The appellant, Anjay Bansal, filed an application for registration of a device trademark (Application No. 3900190 in Class 35) on 27 July 2018, asserting use of the mark since 17 May 2005. The mark relates to services in the field of human resources. The Registrar of Trade Marks issued an examination report dated 27 August 2018 raising an objection under Section 9(1)(a) of the Trade Marks Act, 1999, on the ground that the mark was non-distinctive. The appellant responded on 7 September 2018, asserting that the mark was distinctive and had acquired distinctiveness through continuous use since 2005. Following a hearing, the Senior Examiner of Trade Marks issued an order on 17 September 2019 rejecting the application. The appellant challenged this order before the High Court of Judicature at Madras through a Transfer Civil Miscellaneous Appeal filed under Section 91 of the Trade Marks Act.

Legal Issues Presented

1. Whether the device mark applied for registration is non-distinctive under Section 9(1)(a) of the Trade Marks Act, 1999.
2. Whether the device mark has acquired distinctiveness by virtue of long and continuous use, thus qualifying for registration under the proviso to Section 9(1) of the Trade Marks Act.
3. Whether the mark is excluded from registration under Section 9(1)(b) of the Trade Marks Act as it indicates the intended purpose of the services.

Arguments of the Parties

Appellant's Arguments

• The appellant asserted continuous use of the device mark since 17 May 2005, supported by invoices from July 2005 onwards showing the mark printed on them.
• The device mark consists of four distinctive elements: the word "people" in indigo-green, the word "source" in green, a uniquely shaped letter "o" in "source" styled as a magnifying glass, and a depiction of a person within the "o".
• The combination of these elements renders the mark distinctive as a whole.
• The appellant contended that the mark acquired distinctiveness through use over the years, and therefore the rejection order was unreasoned and unsustainable.

Respondent's Arguments

• The respondent relied on Section 9(1)(b) of the Trade Marks Act, which prohibits registration of marks consisting exclusively of signs indicating the intended purpose of goods or services.
• Since the mark relates to human resources services, it falls within the scope of Section 9(1)(b) and is therefore not registrable.

Table of Precedents Cited

No precedents were cited in the provided opinion.

Court's Reasoning and Analysis

The Court examined the factual matrix, including the appellant's evidence of continuous use of the device mark since 2005, notably invoices and an annual report. It analyzed the composition of the mark, noting the four distinctive elements combined to form a unique device. The Court considered the objection under Section 9(1)(a) relating to non-distinctiveness and Section 9(1)(b) concerning marks indicating the intended purpose.

The Court found the impugned order rejecting the mark to be unreasoned and unsustainable, especially given the appellant's evidence of acquired distinctiveness through long-term use. The Court emphasized that while the mark as a whole may be distinctive, the appellant cannot claim exclusive rights over the individual elements of the mark.

Holding and Implications

The Court set aside the impugned order dated 17 September 2019 and directed that the application proceed to advertisement. The Court clarified that this order is not binding on any opponents who may oppose registration and that the appellant cannot claim exclusive rights over the individual elements of the device mark.

The direct effect of this decision is that the appellant’s trademark application will continue through the registration process, but no new precedent was established by the Court. The ruling primarily addresses the insufficiency of the prior rejection order and affirms the possibility of registration upon acquired distinctiveness.