ABU DHABI GLOBAL MARKET V THE REGISTRAR OF TRADEMARKS, DELHI

FACTS- 

  • An appeal assailed an order passed by the Assistant Registrar in the Registry of Trademarks, whereby application filed by the appellant, seeking registration of the device mark has been rejected under section-

 

 9(1)(a)- Neither the mark appears to be coined or invented.

 

9(1)(a)-The applicant failed to establish the distinctiveness by filing of evidence of use by way of affidavit. ABU DHABI is geographical name (the capital of the United Arab Emirates) and mark as a whole is non-distinctive which cannot be monopolized.

Arguments raised by Plaintiff- 

  • The finding that the mark is not distinctive, the plaintiff submits that the mark already stands registered without "ABU DHABI GLOBAL MARKET". He submits that, if the logo is distinctive, the mark cannot lose its distinctiveness by the addition, below it, of the words “ABU DHABI GLOBAL MARKET”.
  • With respect to the finding that the mark is not coined or invented, the plaintiff pointed out that the trading name ABU DHABI GLOBAL MARKET of the appellant has been adopted by the appellant under the Federal Laws of United Arab Emirates (UAE).
  • With respect to the finding that the mark could not be registered as Abu Dhabi is the name of a place and is, therefore, in the nature of a geographical indicator, the plaintiff submits that there is no proscription in the Trademarks Act, to registration of a composite mark, a part of which is the name of a place.

Defendent's case-

  • Defendant submits that, as Abu Dhabi is the name of a place and constitutes the most prominent part of the mark which was sought to be registered, the learned Assistant Registrar has correctly refused to register the mark in view of the absolute proscription against such registration contained in Section 9(1)(b) of the Trademarks Act. For the same reason, he submits that the mark, which was being sought to be registered, was also lacking in distinctiveness.

DECISION AND OBSERVATIONS-

  • The grounds on which registration of a trade mark can be refused are contained in Sections 9 and 11 of the Trade Marks Act, which are comprehensive and exhaustive in that regard. In the said provisions, there is no requirement of a mark being “coined” or “inventive” for it to be eligible for registration. Inventiveness is required for registration of a design or a patent, under the Designs Act, 2000 and the Patents Act, 1970, respectively. There is no corresponding provision in the Trade Marks Act.
  • There is no observation, much less any finding, in the impugned order, that the mark was incapable of distinguishing the goods and services of one person from those of another. Instead, the Assistant Registrar seems to have confused distinctiveness with actual user of the mark, with no basis. Evidence of user of the mark is not required to establish distinctiveness. If such an interpretation were to be accepted, marks could never be registered on “proposed to be used” basis – as was sought in the present case.
  • There is, in fact, no reason to hold that the mark is not distinctive. The mark consists of the symbol, below which is printed “ABU DHABI GLOBAL MARKET”. The logo already stands registered, in the appellant's favour, with the Registrar of Trademarks, indicating that the disctinveness of the logo stands The plaintiff is correct in his submission that by adding the words “ABU DHABI GLOBAL MARKET” below the logo, the mark cannot lose distinctiveness.
  • Section 9(1)(b) of the Trademarks Act, in its clear and explicit terms, proscribes registration only of trade marks “which consist exclusively of mark or indications, which may serve in trade to designate the … geographical origin… of the goods or services”. It is only, therefore, trade marks, which consist exclusively of marks or indications which designate the geographical origin of the goods, which cannot be registered. Composite marks, therefore, stand ipso facto excluded from the scope of Section 9(1)(b), even if part of such marks consist of marks or indications which serve, in trade, to designate the geographical origin of the goods or services in respect of which the mark is

The impugned order cannot, therefore, sustain.