CAN "ABU DHABI GLOBAL MARKET" BE REGISTERED AS A TRADEMARK ?
The Assistant Registrar refused the registration of a device mark “ABU DHABI GLOBAL MARKET” citing Section 9(1)(a) of the Trademarks Act, 1999. The Delhi High Court, however, set aside the order of the Assistant Registrar and remanded the trademark application to the office of the Registrar of Trademarks for advertisement. Important takeaways from this order are:
1. The marks, according to section 9 and 11, need not be “coined” or “invented” but only need to be “distinctive” for registration. Thus, the Assistant Registrar cannot refuse the mark on the ground that it is not “coined” or “inventive”.
2. 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. A device of circle on top of the words “ABU DHABI GLOBAL MARKET” was already registered indicating that the distinctiveness of the circle logo stands recognized. By adding the words “ABU DHABI GLOBAL MARKET” below the logo, the mark cannot lose distinctiveness.
3. So long as others do not use the mark, or any similar mark, a finding of non-distinctiveness can ordinarily not be returned as, howsoever innocuous a mark may appear to be, if it is used only by one person, it would, in plain etymological terms, be distinctive.
4. Composite marks, 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 registered.
5. The “dominant part” principle is alien to Section 9(1)(b). It cannot co-exist with the “exclusivity” principle which finds statutory place in the provision. Section9 (1) (b) uses the word “exclusively”. The use of the word “exclusively” completely forecloses any argument predicated on the “dominant part” principle. It is only if the entire mark exclusively falls within one of the excepted categories envisaged by Section 9(1)(b) that the registration of the mark can be treated as statutorily proscribed.
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