Vijay Kumar Makyam, Technical Member (Trademarks)1. The present Appeal is filed under Section 91 against the Order dated 18/03/2019 refusing the review petition of the Appellant dated 20th August 2018 and consequently refused the Trademark application for the device Trademark “IMAGE ” vide application No. 2610237 in class 25 for Goods related to “Clothing, pants, jeans, shorts, skirts” (“The Impugned Order”).2. The Appellant states that this application was filed on10th October 2013 claiming prior usage of the mark since 7th June 2006. A formal Examination Report was issued on 29th October 2014 both Section 9 and 11 Objections were taken by the Examiner. The Appellant had replied back to the said Examination Report on 12th March 2015 and stated that the mark is not descriptive and other similar device marks are registered to others and the mark of the Applicant is registered in 28 foreign jurisdictions and with regards to the Section 11 objection that the mark is completely different than that of cited mark.3. Thereafter, the Hearing was scheduled on 16th July 2018 and at the hearing the Respondent maintained the Objections despite the arguments of the Appellant. The Appellant made submissions with respect to the distinctiveness of its trade mark “IMAGE” as it is a device mark and even filed an affidavit of usage along with documents to establish the usage of the mark. Having heard the detailed submissions on behalf of the Appellant, the Respondent passed an order refusing the mark on 20th July 2018 refusing the Appellant’s trade mark application on the ground that the trademark applied for is objectionable under Section 9/11 of Trade Marks Act, 1999 and maintained the initial refusal made in the Examination Report. Thereafter the Appellant had filed review of the decision of the Respondent for which an hearing was scheduled on 25th February 2019 and on 18th March 2019 the Respondent passed the impugned order refusing the Registration of the mark on the ground that the mark is (1) Non-distinctive and (2) Highly Descriptive and accordingly the mark is refused under Section 9 of the Trademark Act, 1999. Aggrieved by the impugned order and decision dated 18th March 2019(impugned order) by the Respondent, the Appellant has filed the present appeal before us.4. The learned counsel for the Appellant submitted that the Registrar of Trade Marks had erred by deciding that the impugned device trademark “IMAGE ” of the Appellant as non-distintive and highly descriptive. The case of the Appellant is that the trademark “IMAGE” is a device mark and inherently distinctive trademark for goods under class 25 and stated that the mark “IMAGE” The Women's Pocket Stitch Device mark is not devoid of distinctive character and is capable of distinguishing the goods of one person from those of another as required under Section 9(1)(a) of the Act.5. The Appellant submitted that the source identifying feature of pocket designs, particularly with respect to jeans, is accentuated by the fact that the tags at the back of the jeans bearing the brand name are usually hidden by clothing worn on top, such as, shirts and t-shirts and the only visible portion of the jeans are the pockets at the back. Accordingly, different companies create different pocket designs to distinguish their jeans from jeans manufactured and sold by other companies, and, consequently, pocket designs have become as important as the brand name itself.6. The Appellant submitted that the Respondent had earlier recognized pocket designs as source identifiers as early as 1988, when Levi Strauss & Co. was granted registration for pocket stitches in India. Since then, the Respondent has granted registrations for various distinct pocket designs owned by third parties in Class 25. And listed few Registrations as follows in India: -“TABLE”7. The Appellant submitted that registrations of the above shown pocket designs in respect of Class 25 goods, including, readymade clothing, are prima facie proof of the fact, that pocket designs have been considered distinctive and capable of distinguishing readymade clothing of one party from those of others by the Registry.8. The Appellant relied on Judgment of Hon’ble Delhi High Court in Levi Strauss & Co. v. Rajesh Agarwal, REA 127/2007 & CM Nos. 3247/2007, which by its order dated January 3, 2018 recognized the distinctive nature of pocket designs as source identifiers by granting Levi Strauss & Co. a permanent injunction against the respondent from selling jeans bearing the labels, marks and other brand identifiers of Levi Strauss & Co., including, the pocket stitch design of the jeans. Thus, the source identifying feature of pocket designshas been accepted by the Honorable Delhi High Court as well.9. The Appellant also submitted that Trade Marks Registries around the world have recognized the distinctiveness in the Women's Pocket Stitch Device mark in relation to readymade clothing. To this effect, the Appellant has secured registration of the Women's Pocket Stitch Device mark in more than twenty-eight (28) countries/jurisdictions around the world, such as Belgium, Israel, Italy, Japan, Luxembourg, Netherlands, Russia and Spain. Clearly, the Senior Examiner of Trade Marks has, while passing the Impugned Order, failed to appreciate the fact of the Appellant's worldwide registrations for the Women's Pocket Stitch Device mark in relation to readymade clothing.10. The Appellant also submitted that courts around the world have acknowledged consumer perception in recognizing stitching designs located on jeans pockets and the use of those designs as an indicator of origin and stated that it is clear that consumers are used to seeing designs on the back pockets of their jeans, that they recognize these designs as an indicia of origin, and that they purchase a particular jeans with the intent that others will recognize the brand they are wearing from the stitching design. Similarly, it is the Appellant's submission that, consumers who encounter the Women's Pocket Stitch Device mark will immediately perceive it as a trademark and associate it with the Appellant and its goods, thereby serving as a source-identifier.11. The Appellant also stated that in addition to being an inherently distinctive mark in view of the reasons stated above, the Women's Pocket Stitch Device mark had acquired distinctiveness on the date of the Subject Application by virtue of exclusive and continuous use in India. The Appellant first began applying designs on denim products sometime in 1996. The Women's Pocket Stitch Device mark was first used in the United States of America in the year 2002 on jeans. Since then, the Appellant's readymade clothing, namely pants, jeans, shorts and skirts bearing the Women's Pocket Stitch Device mark has been sold notonly in the United States, but also in other countries, including India.FINDING OF THE BOARD12. We have examined impugned order dated 18th March 2019 and heard the leaned Counsel for the Appellant, the moot question for consideration in this appeal is whether the “IMAGE” WOMEN'S POCKET STITCH design is distinctive enough to overcome the Absolute Grounds of refusal under Section 9 of the Trademark Act, 1999.13. The Functional features of clothing cannot be protected under trademark law; however a design feature on clothing is something which is distinctive can be protected that is when consumers see the feature, that they believe that it comes from only one company, or “source.” The legal question is whether that consumer would believe that the stitch pattern was exclusive to one company, or whether it was merely an ornamental design used because it looks nice.14. Further proving acquired distinctiveness is not easy if it is the more common a design, the more difficult it will be to prove acquired distinctiveness. Also it is to be noted that purchasers are accustomed to seeing embellishments on jean pockets and would not think this embroidery design identifies the source of the jeans. However when consumers can recognize a product manufacturer without even seeing the name then that may be able to protect that look under trademark law.15. The Appellant argument that its “IMAGE” WOMEN'S POCKET STITCH designs are not common is not supported by any of the record or documentary evidence. There are a multitude of variations of arches, checks, swoops, waves and other linear designs registered or in use on jeans pockets. They are in no way ‘elaborate and unique.'” However the Appellant argued that the mark has acquired distinctiveness based on the usage of the mark internationally as well as in India.16. The Appellant submission narrated in paragraph 6 of this order along with the list of the mark cited by the Appellant himself would attract Section 11 objections against the Appellant Application. It appears to us that the Respondent had not properly examined the Application to cite the relevant marks during the examination and wrongly construed the mark applied for is for words “WOMEN'S POCKET STITCH” and not the device “IMAGE”. 17. However since the Appellant had also claimed the prior usage of the mark since 7th June 2006 more than 6 years on the date of application the benefit of Section 12 Honest and concurrent usage can be provided to the Appellant.18. It is pertinent to mention that there is no speaking order or reasoning provided for the refusal of the impugned mark by the Respondent as to why the usage document or affidavit has not taken into consideration for passing the impugned order. It need to be noted that Trade Marks Act 1999 is a Special Act and thus all Sections are to be applied strictly as per law stipulated in the Statue. Under no circumstances self-made procedure and guidelines can be adopted even for the sake of earlier disposal of any matter. The interpretation of any Section should not be misinterpreted for the sake of convenience.19. The Respondent being creation of the Act and constituted under the provisions of the Act, is expected to follow the provisions of law meticulously in passing detailed orders more specifically in consonance with Sub Section 5 of Section 18 of the Act read with Rule 36 of Trade Marks Rules 2017. Section 18(5) of the Act reads as under “In the case of refusal or conditional acceptance of an application, the Registrar shall record in writing the grounds for such refusal and conditional acceptance and t
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he material used by him in arriving at his decision.” A similar language has been used in Rule 36. Section 18 of the Trademark Act, 1999 is an incumbency provision which cannot be disregarded by the Respondent in passing its orders.20. The impugned order displays that Respondents has not considered the submission of the Appellant and seems to have been passed without any application of mind. If the Respondent would have considered the contentions of the Appellant and discussed the documents filed by it; the Respondent would have considered the acquired distinctiveness of the mark and would have allowed the application under Section 12 Honest and Concurrent usage based on the Affidavit and user documentation filed.21. In view of the circumstances mentioned above, the present appeal is allowed setting aside the impugned order dated 18thMarch 2019passed by the Respondent. The application under Application No.2610237 in class 25of the Appellant shall be Accepted before Advertisement (ABA) and published in the Trademark Journal and proceeded in accordance with law with a disclaimer that no exclusivity to the stitches and pocket per se.22. No costs.