The Delhi High Court, vide Order dated 11 December 2023, declined to grant the prayer of plaintiff (that uses the word mark “Institute of Directors”) to restrain the defendant from using the mark “Directors’ Institute”.
Facts
The petitioner registered its word mark “Institute of Directors” under the classes 16, 35 and 41. The plaintiff used the mark for running an institute, conducting events, networking and other associated activities.
The petitioner sought interim injunction against the defendant’s usage of “Directors’ Institute”.
Judgment
While applying for trademark registration under class 41, the petitioner submitted the following in response to the objection raised by the trademark registry under Section 9 of the Trade Marks Act:
“We humbly submit that the mark IOD INSTITUTE OF DIRECTORS BUILDING TOMORROW’S BOARDS (DEVICE) of the Applicant is in the form of a device. It is pertinent to note that the words used in the mark are common English language words and are descriptive in nature and cannot belong to any one Proprietor. The Applied mark should be seen as a whole. It does not have direct reference to the characteristics like kind, quality, quantity or other characteristics of services. Moreover, the mark possess all the necessary pre-requisites laid down by the law to be termed as a mark as defined in section 2(1)(m) of the Trade Marks Act, 1999.”
The Court considered the above and held that the submission cannot be limited to class 41 alone. Further, “If the words used in the device mark are common English words-as, prima facie, they indeed are-over which no one can claim ownership, the plaintiff cannot, quite obviously, claim exclusivity over the words “Institute of Directors”, or seek an injunction against the defendants using “Directors’ Institute”….. Words which are descriptive, or indicative of the nature of the services provided, or are lacking in distinctive character, are ex facie disentitled to registration under clauses (a) and (b) of Section 9(1)1 respectively, unless the mark has, by dint of continuous user, become well known. Relief against infringement is available, under Section 28(1), only to the holder of a valid registration in a trade mark.” (para 21 and 22)
The Court considered the petitioner’s mark as a descriptive mark and in this regard held that the word mark is inherently a weak mark. The Court refused to read the prima facie presumption of validity of trademarks in favour of the plaintiff.
The Court concluded that the plaintiff cannot prima facie claim exclusivity over the words “Institute of Directors” and refused to restrain defendants from using the mark “Directors’ Institute”.
Comments
The tendency to monopolise common english words must be looked down. I echoed the same sentiment in my recent post concerning makemytrip v. dialmytrip – even though “makemytrip” is a mark that appears to have achieved some degree of distinctiveness with more than 2 decades of market presence.
The court summarised the legal position as follows:
“28. It is well settled that words of ordinary English usage cannot be monopolised. Else, the entire English language would be appropriated by a few, which can obviously not be permitted. There is, therefore, in Section 9(1)(a), an absolute proscription to registration of marks which are inherently lacking in distinctiveness, in that they are incapable of distinguishing the goods or services of one person from those of another. Words of common English usage fall within this category. It is only if the mark has attained secondary significance, by dint of continuous usage and is entitled, therefore, to the benefit of proviso to Section 9(1), that such a mark can be registered. Otherwise, words of common English usage, even when put together to form a phrase of common English usage, cannot be registered. No monopoly can be claimed by the registrant of such a mark.
32. Obtaining of a registration in respect of a mark which consists of common English words is fraught with the possibility of its own adverse sequelae. While obtaining registration of such a mark, the registrant has to be conscious that, the mark being a combination of ordinary English words, and, in fact, as in the present case, being a mark as non-distinctive as “Institute of Directors”, there is every possibility of a similar mark being used by another person. Commonly used words, or a non-distinctive combination of commonly used words, cannot be monopolised by any one person, so as to disentitle the rest of the world to the use thereof.”
The Trademark Registry ought to be pro-active in declining the registrations of such marks. This will deter the trademark owners from investing in such weak marks .
The onus should be upon the trademark registry to explain as to why they granted registrations in the first place. I had the opportunity to examine certain chinese IP laws. One thing I noticed is, the chinese law holds administrative officials personally liable when they err in their performance of duties – a feature which is not so common in the Indian system.
