Elgi Ultra Industries Limited vs Assistant Registrar Of Trade Marks, Trade Marks Registry

Z.S. Negi, J

This is an appeal under Section 91 of the Trade Marks Act, 1999 (hereinafter referred to as the Act) directed against the order dated 28.07.2007

passed by the Assistant Registrar of Trade Marks, Chennai whereby he has refused the application No. 1380715 for registration of trade mark

'ULTRA PERFECT+'.

The appellant, a company incorporated the Companies Act, 1956, applied on 17.08.2005 for registration of trade mark 'ULTRA PERFECT+' in

class 7 and the application was set down for a personal hearing on 28.06.2007. On filing of Form TM-15, the grounds of refusal were received by the

appellant on 30.07.2007. The application was refused under sections 9 and 11 of the Act.

Aggrieved by the impugned order of Assistant Registrar of trade Marks, the appellant has preferred the present appeal on the grounds that the

trade mark applied for registration has no reference to the character of the services provided by the appellant and the trade mark has been used

extensively by the appellants and has gained enormous amount of goodwill. The appellant, in support of its claim, has filed copies of the catalogues as

annexure to the appeal. Further, the appellant, by filing copies of advertisements, has claimed that the trade mark applied for has also been advertised

in newspapers in India. The appellant has established a place of business in India and has started actively using the trademark since the date of filing

the application. With regard to the rejection under Section 11 of the Act, the appellant has stated that the goods of the marks cited in the examination

report are in respect of 'Machines and apparatus for use in the application of chemical coatings, etc., high-efficiency dryers, water purifier and

blender', which are entirely different from the appellant's goods i.e., wet grinders, coconut scraper, atta kneader, food processors and mixer grinders.

The appellant has prayed that the impugned order of the Assistant Registrar of Trade Marks may be set aside and the application should be allowed to

proceed to publication in the Trade Marks Journal.

A notice dated 20.12.2007 along with copy of appeal was issued to the respondent for filing a statement, if it wished to contest the appeal, within

two months but no statement has been filed by the respondent. The appeal came up before us for hearing when Shri A. Vijay Anand, Advocate

appearing on behalf of the appellant submitted that the appellant, an Indian company established in the year 1981, is engaged in the business of

manufacturing and marketing of wet grinders, coconut scrapper, atta kneader and other home appliances. The trade mark ULTRA PERFECT + has

been used in India by the appellant since February, 2006 in respect of the goods of its manufacture and merchandise and the sales turn over for the

year ending 31.3.2006, 31.3.2007 and 1.4.2007 to 31.7.2007 are Rs. 31.42 lacs, Rs. 241.14 lacs and Rs. 128.20 lacs, respectively and the learned

Counsel took us through copies of a few invoices filed by the appellant. Learned Counsel further submitted that the appellant has spent more than Rs.

53 lacs towards advertisements for promoting its goods under the aforesaid trade mark; a few copies of such advertisements were filed along with the

appeal. He stressfully submitted that by reason of use and by reason of quality of the goods, in respect of which registration of trade mark was sought

for, the trade mark since 2006 is identified with the appellant alone and the trade mark has acquired distinctiveness entitling the same to be registered.

We have carefully heard the learned Counsel and have gone through the documents filed by the appellant. The respondent has in his order admitted

that the learned Advocate for the applicant argued that the mark was distinctive and qualified to be registered and after referring the provisions of

Section 9 of the Act and considering the meaning of the words 'ultra' and 'perfect' came to the conclusion that the mark is highly descriptive and

laudatory and every person can use such descriptive/laudatory words for its products. One of the ground of challenge of the impugned order that the

mark for registration has no reference to the services provided by the appellant is totally wrong as the mark applied for is not a service mark but a

mark for the goods of the appellant's manufacture and merchandise. There is no doubt that the mark applied for consist of words which are laudatory

in nature and may serve in the trade to kind or quality of the goods and there is no user by the applicant/appellant before the date of application to avail

of the benefit of exception provided under the proviso to Sub-section (1) of Section 9 of the Act. It cannot be said that the mark by way of user has

assumed secondary meaning as the application for registration was made on the basis of mark proposed to be used. The appellant has filed certain

invoices/bills which pertain to periods prior to the date of making application for registration but on the face of user claimed, i.e. proposed to be used in

the application, those invoices/bills cannot be taken into account. There is also no explanation as to how the appellant came to adopt the trade mark

applied for. In paragraph 4 of the affidavit dated 16.10.2007 of Mr. C. N. Subramanian, Vice President (Finance) of the appellant, it is stated that the

trade mark has been used in India by his company since February, 2006 but there is no clarification if the mark is used in places other than India. The

invoices/bills prior to 2006 are pointer that the trade mark has been used by some one, somewhere during the years much prior to year 2006 (Invoice

No. 61110278 dated 14.06.1996 for Rs. 48650/- at p.114). If that be so, it has not been disclosed or explained as to why the user of the mark has not

been claimed by the appellant at least since the year 1996 for which a copy of invoice has been filed. It is the submission of the appellant that the

above trade mark satisfies all requirements of a distinctive trade mark and hence should proceed to registration. The onus is on the applicant/appellant

to satisfy the Registrar of Trade Marks that the mark is distinctive or capable of distinguishing its goods from that of the others and the mark is

registrable but the appellant has failed to discharge the onus on him. The mark is registered as of the date of application and the date relevant for

proving that the mark is capable of distinguishing is the date of filing application for registration. Obviously, the applicant/appellant cannot prove that,

as the mark has not acquired distinctiveness before the date of application by way of user. There is no pleading to indicate that the invoices/bills

referred to above were produced before the respondent; no submission has been made across the bar before us during the course of hearing that the

said invoices/bills were produced before the respondent and the respondent has not referred to production of any invoice/bill in his impugned order. If

the invoices/bills were not produced before the respondent, which were available with the appellant, there ought to be explanation as to why they were

not produced. We are of the opinion that the objection under Section 9 of the Act itself is sufficient to reject the present appeal.

In view of the above, we see no merit in the appeal and the appeal is accordingly dismissed. There is no order as to costs.