When Mark Was Not Considered As Descriptive Of Goods Covered By TM Registrations, Same Cannot Be Treated As Descriptive For Purpose Of Advertisement: Madras HC

While considering an appeal challenging refusal of registration of word mark "FC MADRAS", the Madras High Court approved the application for advertisement subject to the condition that no exclusive right can be claimed over the word 'Madras' when used separately.

While accepting the application, the High Court made it clear that because the order of the Registrar contains no reason for rejection of the application, other than the reference to Section 9(1)(a), the order is liable to be set aside.

A Single Judge Bench of Justice Senthilkumar Ramamoorthy observed that “When the mark was not considered to be descriptive of the goods covered by the said registrations, the same mark cannot be considered to be descriptive of the goods covered by the present application. Therefore, the objection under Section 9(1)(a) of the Trade Marks Act is untenable”.

Advocate R. Sathish Kumar appeared for the Appellant, whereas Advocate P.G. Santhosh Kumar appeared for the Respondent.

The brief facts of the case were that the appellant applied for registration of the mark “FC MADRAS” in the year 2018 in Class 16 pertaining to printed publications, books, newspapers, periodicals, and journals. The Registrar of Trade Marks however raised an objection under Section 9(1)(a) of the Trade Marks Act, 1999 on the ground that the mark is a geographical name and, as such, incapable of distinguishing the goods of one person from those of others. The appellant replied to the examination report and pointed out that the mark adopted by the appellant has no connection with the geographical origin of the goods and that such mark is coined and capable of distinguishing the goods of the appellant from those of others. The application was however rejected by reiterating that the mark is a common geographical name which is incapable of distinguishing the goods of one person from those of others.

After considering the submission, the Bench found that the order of the Registrar merely draws reference to Section 9(1)(a) of the Trade Marks Act as the reason for refusal of the application.

The Bench also found that the grounds of decision also do not contain any reasons apart from the conclusion that the mark is a common geographical name and is consequently incapable of distinguishing the goods of one person from those of others.

From the application of the applicant, the Bench noted that the application was for registration of the word mark "FC MADRAS", and therefore, the mark should be considered as a whole and not by splitting it into its constituents.

The Bench went on to explain that under Section 9(1)(a) of the Trade Marks Act, a mark is liable to be refused registration if it is found devoid of distinctive character, whereas the appellant seeks registration of the above-mentioned mark in Class 16 in relation to printed publications, books, newsletters and the like.

The Bench highlighted that the appellant's mark, when viewed as a whole, is certainly not descriptive of the goods in relation to which the mark is applied.

“As pointed out by learned counsel for the appellant, even the Manual of Trade Marks, Practice and Procedure, does not state that geographical names cannot be registered. The guidance provided therein appears to be that such names cannot be registered if they are descriptive of the goods or services in relation to which such marks are applied”, added the Bench.

Hence, finding that the appellant has also provided evidence of the registration of the identical mark in about 3 classes, the High Court allowed the appeal.

Cause Title: FC Madras Trust v. The Registrar of Trademarks and Anr. [Neutral Citation: 2023: MHC: 4270]

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