w w w . L a w y e r S e r v i c e s . i n



Trade Media Holdings Limited v/s Deputy Registrar Of Trade Marks

    OA/50 of 2009/TM/CH

    Decided On, 23 September 2011

    At, Intellectual Property Appellate Board

    By, THE HONOURABLE SMT. JUSTICE PRABHA SRIDEVAN CHAIRMAN & THE HONOURABLE MS. S. USHA VICE CHAIRMAN

    For the Petitioner: A. Vijay Anand, Advocate. For the Respondent: None.



Judgment Text

Order No. 156/2011PRABHA SRIDEVAN, CHAIRMAN

This appeal is against the registration of appellant’s trade mark application No. 871297 in class 9, the trade mark being the words 'asian' and 'sources' in lower case with a logo of a series of oblique fading lines between the two words (hereinafter called the Application).

The appellant is one of the largest companies manufacturing, merchandising and providing services in the field of computer, computer hardware and related services. On 16.8.1999, they made the Application. The examiner raised objections under sections 9 & 11 specifically that 'it has direct reference to the goods' and that it should have a disclaimer. A reply was given stating that they were not agreeable to the disclaimer and that it has no reference to the quality of goods and trade marks should not be split up but seen as a whole. The appellant was heard and the impugned order was passed.

The Learned Counsel for the appellant submitted that the respondent had not applied his mind to the trade mark, and that the entire order refers to the trade mark as consisting of words 'asian sources', ignoring the fact that an indispensable part of the trade mark was the logo. The Learned Counsel submitted that the order indicates erroneously the mark suggests products originating from Asia and therefore description, whereas the products had nothing to do with Asia. The Learned Counsel submitted that the trade mark consisted of coined words and logo and was never intended to claim from Asia. So it was totally wrong to reject the application on the ground since the manufacturer is from 'West Indies' they cannot use trade mark since it will deceive people into thinking that the goods originated from Asia. The Learned Counsel submitted that the same device has been accepted for registration in class 35, 38 and 42. The same trade mark has been registered under No. 1323101 in class 7 on 28.6.2006 and under No. 871298 in class 16 on 24.9.2005. He submitted that several countries have granted registration for the same mark. Wherever registration is granted it has been given for the words and design. The Learned Counsel submitted that the impugned order was unsustainable.

We have considered the materials on record and the submissions.

The applicant has been granted registration for the same trade mark, the words 'asian sources' in lower case with a logo of a series of oblique fading lines between the two words in class 7 under No. 1323101 as of 30.11.2004. This certification is dated 28.6.2006. We do not see how the trade mark registration in class 9 can now be refused.

In all the countries where registration has been granted it is for the same mark. The copies of the certificates are enclosed.

The impugned order proceeds on the basis that the trade mark consists of the words 'asian sources', and totally ignores the logo. It clearly speaks of non-application of mind. Had the trade mark been considered as a whole, the conclusion would have been different.

The words 'asian sources' cannot be held to be description of the goods. The appellant has chosen the mark for distinguishing it from those of others. The unusual design has to be seen as a whole. The prior registration has not been considered in the impugned order nor the registration in other countries. It is well settled that 'in such an important branch of commercial law such as trade marks, there should be uniformity as far as possible in all countries administrations the same system of law'. (vide 57 RPC 137 in Shredded Wheat Co Ltd Vs. Kellogg Co (G.B.) (1940).

The mark is intended to be distinctive of the goods and cannot be construed to be indicative of the source of goods. Totally erroneous reasons have persuaded the Registrar to refuse registration. Is the mark by its mere name descriptive to ordinary purchasers of the goods in question. We think not. The words 'asian sources' with the logo may indicate any class of goods, not just the goods in question so it is clear from the facts and the evidence that the mark as a whole is intended to distinguish the goods of the appellants from other goods. Therefore section 9(1)(a) does not apply. The goods do not come from Asia. So the respondent cannot reject registration under section 9(1)(b). The respondent then held that the persons may think that the goods come from Asia and therefore likely to deceive or confuse. The trade mark has been registered in India for goods in class 7 without fear of confusion, On what basis has the conclusion been arrived at 'I will refuse registration because this indicates the goods come from Asia and so they are deceptive' and the same breath he says 'I will refuse registration because they do not come from Asia, they are deceptive'. This is an arbitrary determination to reject registration and to support it section 9 is merely extracted and the fact that there is a logo in between the coined words is ignored, the fact that there is an earlier registration in class 7 is ignored and also the fact that this mark has been registered in other countries. This is a classic case of unreasonableness. We are unable to understand the rationale behind the order

'Indisputably it is a allied position that if the action or decision is perverse or is such that no reasonable bod

Please Login To View The Full Judgment!

y of persons, properly informed could do or has been arrived at by the authority misdirecting itself by adopting a wrong approach or has been influenced by irrelevant or extraneous matter the Government would be justified in interfacing with the same' vide C.I.T. Vs. Mahindra & Mahindra Ltd. 1983 (4) SCC 400.' We are fully convinced that the above ratio is applicable to this case. We set a side the impugned order for the above said reasons. The OA/50/2009/TM/CH is allowed. The matter is remitted back to the Registrar to advertise the matter and to deal with it in accordance with law.
O R