2022 (2) TMI 443 - HC - Indian Laws

Court overturns decision rejecting trademark application for 'AND THEN THERE WERE NONE' due to mark's distinctiveness

The court overturned the decision to reject the trademark application for 'AND THEN THERE WERE NONE,' finding the mark distinctive due to its association ... Distinctive character of a trade mark - registrability of a mark as a matter of right - definition of trade mark as capable of graphical representation and capable of distinguishing - statutory grounds for refusal under the Trade Marks Act are exhaustive - requirement of reasoned decision for denial of registration - constitutional dimension under Article 19(1)(g) - remand to Registrar for fresh administrative action subject to absence of other infirmitiesDistinctive character of a trade mark - definition of trade mark as capable of graphical representation and capable of distinguishing - Applied mark 'AND THEN THERE WERE NONE' is not devoid of distinctive character and is prima facie registrable for the services in Classes 9, 16 and 41. - HELD THAT: - The Registrar's solitary conclusion that the applied mark 'AND THEN THERE WERE NONE' lacked distinctiveness is unsupported. The impugned order did not find that the mark was incapable of graphical representation, descriptive of the applied-for services, identical or confusingly similar to any earlier mark, or customary in trade. The Act defines a mark and a trade mark to include names and words which are capable of graphical representation and capable of distinguishing goods or services; the applied title, being the well-known title of a literary work and associated with the appellant company, is capable prima facie of creating association with the appellant and of distinguishing its services. Registration, where not barred by any statutory infirmity, is a right and the Registrar may not refuse registration on a ground not contemplated by the Act. [Paras 13, 14, 15, 17, 18]The refusal to register the mark on the ground of lack of distinctiveness is unsustainable and the mark is prima facie registrable for the services in Classes 9, 16 and 41.Statutory grounds for refusal under the Trade Marks Act are exhaustive - registrability of a mark as a matter of right - Registration of a mark can be refused only where one of the specific statutory grounds in the Trade Marks Act is attracted, and absent such a ground registration must ordinarily be allowed. - HELD THAT: - The Court observed that Sections 9, 11 and 13 enumerate the circumstances in which registration may be refused and these are to be treated as exhaustive. The impugned order did not invoke any enumerated statutory bar (such as descriptiveness, customary use, deceptive similarity, earlier registered marks, or other specified prohibitions). Therefore, refusal cannot be sustained on an extraneous or unspecified notion of non-distinctiveness. Where none of the statutory infirmities apply, entitlement to registration is a right that should be respected. [Paras 11, 12, 17]Registration cannot be refused except on the statutorily enumerated grounds; absent any such infirmity the applicant is entitled to registration.Requirement of reasoned decision for denial of registration - constitutional dimension under Article 19(1)(g) - The impugned order is vitiated for lack of adequate reasons; denial of registration requires reasoned findings which are apparent on the face of the decision. - HELD THAT: - The Court held that the right to register a mark partakes of the character of Article 19(1)(g) and that any denial of registration is a valuable right which must be accompanied by reasons. The impugned order was found to be unreasoned and bereft of sufficient explanation to justify refusal. Administrative decisions refusing registration must disclose their rationale so as to permit meaningful judicial review. [Paras 19]Impugned order set aside for being unreasoned; refusal unsupported by adequate reasons.Remand to Registrar for fresh administrative action subject to absence of other infirmities - The matter is remitted to the Registrar of Trade Marks with a direction to register the mark if no other fatal infirmity is found on reconsideration. - HELD THAT: - Having quashed the impugned order, the Court directed remittal to the Registrar for administrative action consistent with its findings. The Registrar is to examine whether any other statutory bar exists; if none is found, the mark 'AND THEN THERE WERE NONE' is to be registered in Classes 9, 16 and 41 as applied for. The direction preserves the Registrar's duty to verify absence of other infirmities before registration. [Paras 21]Matter remitted to the Registrar to register the mark if the application does not suffer from any other fatal infirmity.Final Conclusion: The impugned refusal to register the mark 'AND THEN THERE WERE NONE' is quashed for want of valid statutory grounds and for being unreasoned; the matter is remitted to the Registrar with a direction to allow registration in Classes 9, 16 and 41 if no other statutory infirmity is found. Issues Involved:1. Distinctiveness of the trademark 'AND THEN THERE WERE NONE'.2. Compliance with the Trade Marks Act, 1999.3. Right to register a trademark.4. Reasoning and justification in the impugned order.Issue-wise Detailed Analysis:1. Distinctiveness of the Trademark 'AND THEN THERE WERE NONE':The primary issue addressed was whether the trademark 'AND THEN THERE WERE NONE' lacked distinctiveness. The impugned order rejected the application on the grounds that the mark lacked distinctiveness and was only proposed to be used, with no substantive evidence of prior use as a trademark. The court, however, found this reasoning flawed, noting that the title of Agatha Christie's well-known novel is inherently distinctive and capable of creating an association with the appellant's services.2. Compliance with the Trade Marks Act, 1999:The judgment highlighted that the Trade Marks Act, 1999, provides specific grounds under Sections 9, 11, and 13 for refusing registration of a trademark. These include the mark being devoid of distinctive character, being descriptive, customary in the trade, or likely to deceive the public, among others. The court noted that the impugned order did not allege that the mark 'AND THEN THERE WERE NONE' suffered from any of these statutory infirmities. Therefore, the refusal to register the mark was not justified under the Act.3. Right to Register a Trademark:The court emphasized that the Trade Marks Act confers the right to register a trademark that does not suffer from statutory infirmities. The definitions of 'trade mark' and 'mark' under Sections 2(1)(zb) and 2(1)(m) of the Act include names and words capable of being represented graphically and distinguishing goods or services. The court found no indication that the mark in question failed to meet these criteria. The appellant's right to register the mark was thus upheld, given its distinctiveness and lack of conflict with any existing registered marks.4. Reasoning and Justification in the Impugned Order:The court criticized the impugned order for being unreasoned and lacking sufficient justification. It underscored that the right to register a trademark is a valuable right akin to the freedom to practice any profession under Article 19(1)(g) of the Constitution of India. Any decision to deny this right must be well-reasoned and apparent on the face of the decision. The impugned order failed to provide adequate reasons, rendering it liable to be set aside.Conclusion:The court quashed and set aside the impugned order, directing the Registrar of Trade Marks to register the mark 'AND THEN THERE WERE NONE' under Classes 9, 16, and 41, provided there were no other fatal infirmities in the application. The appeal was allowed with no order as to costs.