Gac Franchise Brands Llc vs Registrar Of Trademarks

The present appeal is filed under Section 91(1) of the Trade Marks Act, 1999 in which the application No. 2578180 for the registration of subject

trade mark

“ â€Was filed by the appellant on 08th August, 2013 with a use claim from 20th July, 2005 before the Trade Marks

Registry, Delhi was refused for registration.

Prior to refusal the subject trade mark was examined and an examination report was issued wherein objections on Sections 9 and 11 of the Trade

Marks Act, 1999 were raised. A response to the objections raised in the examination report was duly filed by the appellant and thereafter, the

applicant filed the reply to the examination report vide letter dated 27th January, 2015 and an affidavit of use dated 18th June 2018 of ms. Holly Frey

was produced. Subsequently, the subject trade mark was listed for a show cause hearing on 24th January, 2019 and the counsel for the appellant had

appeared before the Senior Examiner at the Trade Marks Registry, New Delhi.

The Hearing Officer is of the view that  the applied trade mark  “      †was descriptive of the services applied for i.e. ‘retail

bakery store services, restaurant services, services providing food and drinkâ€, that is non-distinctive and the hearing officer was also not inclined to

discuss the objection under Section 11 of the Act.

It is stated on behalf of the appellant that the appellant’s predecessor honestly adopted the trade mark GREAT AMERICAN COOKIES in the

year 1994. Thereafter, the appellant continued to extensively use the said name and also continued to evolve the GREAT AMERICAN COOKIES

brand. It was in 1997 that the appellant adopted the subject trade

mark “ †as an extension of the GREAT AMERICAN COOKIES brand in order to distinguish its goods and services

in the market from those of others. Ever since the adoption of its trade mark, the applied trademark has been continuously, extensively and exclusively

used to market the goods and services of the appellant. The appellant has also spent a voluminous amount of time, money and effort on the promotion,

advertisement and publicity of the applied trademark the world over. By way of the above, a substantial amount of revenue has accrued in the

appellant’s favour and has also led to a substantial amount of goodwill in the appellant’s favour for their applied trade mark.

It is also stated on behalf of the appellant that the applied trademark, by virtue of the above- mentioned arguments and evidence is a well-known

mark that has been used continuously and extensively since the year 1994. The extensive use of the applied trade mark is appreciated by several

Indians by way of appellant’s website, their social media presence and the immense media and press coverage received by the appellant.

Moreover, the appellant and their trade

mark “ †have a strong presence at airports which are frequently visited by customers from india, thereby increasing

the awareness about the appellant trade mark  in India. The concept of trans-border and spill over reputation has received judicial recognition in

serveral judgments of this Hon’ble court and other High courts which also support the case of the appellant in the presentÂ

proceedings. The appellant has also acquired worldwide registrations for the trade mark “ â€​ in various major

jurisdictions of the world.

The Hearing Officer refused the application by way of a brief refusal order dated 24th January, 2019. The appellant later applied for obtaining a

detailed ground of refusal which was issued to the appellant’s counsel on 11th February, 2019.

Aggrieved by the order, the appellant preferred this appeal before this Tribunal.

The appellant submits that the Hearing Officer did not discuss objection on Section 11 of the Trade Marks Act, 1999, therefore, this appeal has

been preferred against the order for refusal on Section 9 of the Trade Marks Act, 1999 only. However, with respect to the objection on Section 11 of

the Trade Marks Act, 1999, the appellant wishes to submit the following:

Cited mark No.2155985 for the mark “ â€​ in class 43 â€" This cited mark stands refused.

Cited mark No.2275137 for the mark “ †in class 43 â€" the cited mark is holistically different from the applied trade mark.

In addition, the appellant is the prior

adopter and user of the trade mark “ â€​ and therefore, has superior rights. Thus the objection under Section 11 is waived.

The Hearing Officer has stated that the objection under Section 9(1)(a), 9(1()(b) are sustained and in view of the said order the appellant relied

upon their submissions made in the appeal.

The appellant submits that the subject trade mark “ †is inherently distinctive as it is a unique logo and

is presented in a distinctive manner and visual representation and it has also acquired distinctiveness by way of use and also that said trade mark has

acquired regtistration in various major jurisdictions of the world. The appellant submits that for these reasons, the objection issued on Section 9 of the

Trade Marks Act, 1999 are liable to be waived off.

9 . The impugned order has been passed without recording the true facts and background of the matter by the Hearing Officer. The Hearing Officer

is bound to send a copy of the order passed under Section 18(5) of the Act of the appellant and such order should contain the grounds for

refusal/conditional acceptance and material used by them at arriving to his decision.

Admittedly, the same mark was registered in many overseas countries. It is logo mark. Thus the objection under Section 9 is waived off subject to

the condition that the appellant shall have the exclusive rights only in respect of the mark applied for. There shall be a disclaimer to the word. Cookies.

Third party would be entitled to use the word American in different form for which, the appellant shall have no exclusive rights. They would have only

right to protect the same if someone shall use the same logo or deceptive similar.

The appeal is allowed. The impugned order is set-aside. No costs.

The application of the appellant shall proceed further as per law. Copy of the order be sent to the respondent.