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KENDRO Laboratory Products GmbH, A German company v/s The Deputy Registrar of Trade Marks, Office of the Trade Marks Registry

    OA/47/2008/TM/CH

    Decided On, 04 September 2009

    At, Intellectual Property Appellate Board

    By, HONBLE SHRI Z.S. NEGI
    By, CHAIRMAN & HONBLE SHRI SYED OBAIDUR RAHAMAN
    By, TECHNICAL MEMBER

    For the Appellant : Ms. Aga Arvind, Advocate. For the Respondent : --------



Judgment Text

Hon?ble Shri Z.S. Negi, Chairman:


This is an appeal under section 91 (1) of the Trade Marks Act, 1999 (hereinafter referred to as the Act) directed against the order dated 19.02.2008 passed by the Deputy Registrar of Trade Marks refusing registration of trade mark MULTIFUGE.



2. The appellant, which is one of the largest German Company operating in the field of laboratory centrifuges filed application No. 889513 dated 02.12.1999 for registration of trade Mark MULTIFUGE in class 07 in respect of laboratory centrifuges. The mark applied for was proposed to be used. On 08.03.2004 the appellant received an official order of acceptance of the mark vide letter No. TLA/Acpt/2008 dated 01.03.2004. After examination, the application was advertised in the Trade Marks Journal No 1331 Suppl. (1) dated 15.06.2005. Ultimately, the matter was set down for hearing on 05.12.2007 and the Deputy Registrar of Trade Marks heard the matter and passed an order dated 05.12.2007 refusing registration of the trade mark. On an application on Form TM-15 by the applicant/appellant, the Deputy Registrar of Trade Marks, Chennai issued order dated 19.02.2008 giving the grounds for refusal. Aggrieved by the impugned order the appellant has preferred the present appeal.



3. The grounds of appeal are, inter-alia, that the respondent erred in not giving an opportunity to the appellant to present further evidence on the registrability and strength of the trade mark MULTIFUGE; that the mark was initially accepted for registration by the Examiner of Trade Marks and subsequent objection under section 9 of the Act raised and the order of withdrawal of acceptance proposed to be passed is erroneous; that the respondent erred in finding that the mark has direct reference to the character and quality of the goods in question; that the respondent erred in not giving due weightage to the fact that the registrability of the mark has been well recognized in other jurisdictions and the trade mark MULTIFUGE has rightly proceeded for registration in many countries of the world and that the respondent erred in not allowing the application to proceed to advertisement.



4. The matter was taken up for hearing 14.08.2009. Ms. Aga Arvind, learned counsel appeared for the appellant. During the course of hearing, learned counsel for the appellant stressed that the mark for registration was allowed initially and the Assistant Registrar of Trade Marks, after satisfying himself about the registrability of the trade mark, has passed orders for advertisement before acceptance. After acceptance and advertisement published in the Trade Marks Journal, there was no cause to withdraw the acceptance and refuse the registration by the Deputy Registrar of Trade Marks. The learned counsel furnished two leaf-lets downloaded from the internet which explain how the laboratory centrifuges and multifuges function.



5. After hearing the learned counsel for the appellant and going through the records, we are inclined to agree with the grounds of refusal recorded by the Deputy Registrar of Trade Marks in his impugned order dated 19.02.2008. We are of the view that the trade mark sought to be registered is barred by clause (d) of sub-section (1) of section 9 of the Trade and Merchandise Marks Act, 1958. The Deputy Registrar of Trade Marks has recorded that the mark has not yet been put to use. It is no ground for allowing the appeal that the Deputy Registrar has withdrawn the earlier acceptance of the trade mark. Mere acceptance of application for registration of a trade mark or its advertisement confer no right on the applicant to get registration of the mark. It is also no ground that since the mark MULTIFUGE has been registered in many jurisdictions the registration may be granted in this country also. We do not know what were the facts and circumstances when the said registrations were granted in other jurisdictions. The Registrar is empowered to refuse registration to preserve the purity of the Register in public interest especially, as here, when the Registry has found subsequent to the advertisement of the application in the Journal that the mark applied for is descriptive. Since the mark is proposed to be used and there is no use to enable the mark to acquire distinctiveness. The onus of proving that the mark applied for is registrable under the Act is on the applicant and in this case the applicant has not shown as to how the mark is distinct and does not refer to the character of the good to be used in laboratory and as such has failed to discharge the onus cast upon it. One of the grounds of appeal that the respondent has err

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ed in not giving an opportunity to present further evidence on the registrability and strength of the trade mark is not tenable as the appellant has at paragraph 4(x) stated that hearing was held before the respondent on 05.12.2007. If that be so, whatever possible evidence the appellant had in its possession at the material time, the same could have been produced on that day to prove its claims. We see no merit in the appeal. 6. In view of the above, we dismiss the appeal with no order as to costs.
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