18 May 2022

MODICARE LIMITED VS REGISTRAR OF TRADEMARKS

FACTS:

The present case is an appeal filed to challenge the registrar’s decision of rejecting the appellant’s application for registration of the trademark “SALON PROFESSIONAL” under Class 3. The objection under Section 11(1)(b) and 9(1)(b) were furthered on the grounds of similarity of mark and goods covered , in relation to an earlier trademark and that the mark consists of words which may serve in trade to designate the kind, quality, intended purpose and other characteristics of the goods respectively.

CONTENTIONS:

The appellant is known to be the pioneer of direct selling businesses in India since 1996. With a pan India presence of over 55 Modicare centres, the appellant offers more than 350 products under 14 different product categories. The appellant contends that it had honestly conceived the mark “SALON PROFESSIONAL” and has been associated with it since the year 2003 along with the flagship house mark “MODICARE”. Furthermore, the appellant already holds the registration of the mark “MODICARE SALON PROFESSIONAL” dating back to the year 2016 for various products under Class 3. The appellant had, then, applied for registration for the mark “SALON PROFESSIONAL” without “MODICARE” under the same Class 3. The appellant also claims that the mark “SALON PROFESSIONAL” is a combination of two peculiar words and thus, the combination in itself is distinctive.

Secondly, the previous mark  “YOU LOOK BE SMOOTH GREAT” and the objection of Section 11(1)(b) should not stand as the device is a combination one and is not at all similar to the appellant’s mark. The appellant reiterated that it has been continuously using the “SALON PROFESSIONAL” since the year 2003 thereby having acquired a secondary meaning.

JUDGEMENT:

The court furthered conceptual analysis over the subject matter with special emphasis on the manner in which the mark is being used by the appellant. In addition to that, the significance of a mark being applied as a device or word mark has been stressed upon and can be evidenced by the following stance of the court:

“since the mark which is in use by the appellant is a device mark in a logo form, grant of a word mark, especially, considering the nature of the mark sought to be registered, could result in blocking other businesses from using the words “SALON” and “PROFESSIONAL” , constituting the mark.”.

 

Ultimately, the court, after considering the fact that the appellant has been in uninterrupted use of the registered mark “MODICARE SALON PROFESSIONAL” and the fact that the appellants are willing to modify the word mark into a device mark, directed the advertisement of the mark as “advertised before acceptance” but subject to the following conditions:

  • The mark ‘SALON PROFESSIONAL’ bearing Application no. 3308620 in Class 3 shall be associated with the mark ‘MODICARE SALON PROFESSIONAL’ bearing Application no. 3308621 in Class 3. The association shall also be mentioned in the advertisement of the trademark.
  • The word mark ‘SALON PROFESSIONAL’ in Application no. 3308620 would be replaced by the device mark “ SALON PROFESSIONAL” which is being used by the Appellant.
  • The design/ logo mark shall proceed for advertisement subject to the condition that there would be no exclusive right in the words ‘SALON’ or ‘PROFESSIONAL’.