In C.A. (COMM.IPD-TM) 8 of 2023- DEL HC- Trademarks Act - Registrar erred in dissecting the subject mark into its individual parts while considering registration: Delhi High Court allows appeal of petitioner challenging refusal of the registration of device mark ‘CruzOil’ in class 04
Justice Amit Bansal [30-05–2023]

Read Order: Navaid Khan v Registrar of Trademarks Office

Simran Singh

New Delhi, June 7, 2023: The Delhi High Court has allowed the appeal under Section 91 of the Trade Marks Act, 1999 (TM Act) wherein the appellant challenged the refusal of the registration of the appellant’s device mark ‘CruzOil’ (subject mark) in class 04 contending that the subject mark, when considered as a whole, had no dictionary meaning nor was it used in common parlance.

The registration of the subject mark was rejected on the ground that the mark consisted exclusively of words that may serve in the trade to designate the intended purpose of the goods. The Bench however, was of the view that the mark having a combination of words and devices had to be considered as a whole for the purposes of grant of registration.

The subject mark was a device mark which consisted of various unique and arbitrary elements, such as a tagline ‘Lifeline for Engines’, yellow background with two purple rings, unique pattern of semi circles with images of 4 stars on alternative sides with a pattern of slanting parallel lines and held that Registrar erred in dissecting the subject mark into its individual parts while considering registration.

The appellant impugned the order dated 12-01-2023 passed by the Registrar of Trade Marks, refusing the registration of the subject mar in class 04 stating that “The mark applied for registration is objectionable under S 9(1)(b) of the Trade Marks Act 1999, as it consists of which may serve in trade to designate the kind, intended purpose of the goods or other characteristics of the goods. The applied mark is highly descriptive as it designate the kind and intended purpose of the goods applied for registration. It clearly indicates that the oil is used in Cruz or for Cruz. It is the name of the product. It is not coined nor invented. It cannot be monopolized.”

It was the case of the appellant that he had filed an application for registration of the subject mark in class 04 of which the examination report was issued by the Registrar of Trade Marks raising objection under Section 9(1)(b) of the Trade Marks Act, 1999 on the ground that the mark consisted exclusively of words that may serve in the trade to designate the intended purpose of the goods. However, the appellant replied to the objection stating that the subject mark, when considered as a whole, had no dictionary meaning nor was it used in common parlance. Pursuant to the representation filed by the appellant, a hearing was conducted subsequent to which the impugned order dated 12-01-2023 was passed refusing the application of the appellant.

The Bench noted that the appellant had applied for registration of a composite device mark, which contained the word ‘CruzOil’, along with other elements. However, the impugned order proceeds on the basis that the subject mark was a word mark, ‘CruzOil’ and therefore, treats it as such.

The Bench navigated through Section 9(1)(b) of the TM Act and the judgment of the co-ordinate Bench of this Court in Abu Dhabi Global Market v. The Registrar of Trademarks, Delhi who had interpreted Section 9(1)(b) of the TM Act in respect of composite marks. Thus, held that the Registrar erred in dissecting the subject mark into its individual parts while considering registration.

“It is relevant to note here that there were other composite marks containing the word ‘Cruz’ that have been registered under Class 04, details of which are given in paragraph 15 of the Memorandum of Appeal. It is also relevant to note that the appellant has given a disclaimer with regard to exclusive right to use the word ‘Oil’.”

In view thereof, the appeal was allowed and the impugned order was set aside. The Bench had further directed the Trade Marks Registry to proceed with the advertisement of the application as per the proviso to Section 20 of the TM Act.