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Judgment
This is the Appeal against the Order of Registrar of Trade Marks, Delhi dated 08 May 2019 and the Statement of Grounds of Refusal dated 26th August 2019 passed
by Registrar of Trade Marks, Trade Marks Registry, Delhi, pertaining to the refusal of the registration of Application No. 2578179 in Class 30.
This application was filed in respect ofbakery products, including cookies, cookie cakes, brownies, muffins.
FACTS OF THE CASE
The Appellantbrand was founded in 1977 by Michael Coles and Arthur. The Appellant was originally established as ‘The Original Great American Chocolate Chip
Cookie Company’ which began in the year 1977. The Appellant's operations were based on the cookie recipe that was passed on to the first Chief Executive Officer
of the Appellant by his grandmother. The quintessential cookie recipe that was passed down by one generation to the next one has been preserved even after 43 years
from the inception of the Appellant. The original name was coined to protect and popularize the original cookie cake recipe that was passed on by one generation to
another of the Appellant. Further, the Appellant later changed its name to its present form, 'Great American Cookies'.
Appellant has been one of the most renowned names in the preparation and marketing of cookies under the name ‘Great American Cookies’. The Appellant
offers a great variety of cookies under its 'Great American Cookies' banner, including, but not limited to, gluten free cookies, low calorie cookies, sugar free cookies, cake
mix chocolate chip cookies, vegan cookies, etc., all of which are considered to be one of the defining characteristics of the Great American Cookies brand.
The Appellant’s predecessor honestly adopted theunique and fanciful trade mark “GREAT AMERICAN COOKIES†in the year 1994. Thereafter, the
Appellant continued to extensively use the said trademark and also continued to evolve the GREAT AMERICAN COOKIES brand. In 1997, the Appellant adopted a
stylizedand distinctive logo- , which was artistically created and honestly adopted as a part of the extension of the brandin order to distinguish its goods and
services in the market from those of others.Ever since the adoption, the present Trademark- has been continuously, extensively and exclusively used by the Appellant for
a variety of goods and services which are offered by the Appellant in various countries of the world, material was placed before us.
Appellant’s “GREAT AMERICAN COOKIES†Marks (word/ logo) are the subject of various trade mark registrations around the world, including but not
limited to-Angola, Bahamas, Bahrain, Canada, Chile, Egypt, European Union, Israel, Kazakhstan, Kuwait, Lebanon, Mexico, Oman, Qatar, Russia, Saudi Arabia, South
Africa, Turkey, United Arab Emirates and United States of America. Copies of Registration Certificates for some of these jurisdictions were placed before us.
Appellant has extensive presence on the World Wide Web and is the owner of the domain name-www.greatamericancookies.com registered since 10th March, 1997.
The said website prominently features the present Trademark and the goods/ services provided thereunder. By the sheer virtue and nature of the Internet, the
Appellant’s website is accessible worldwide including to the public in India who are well aware of the repute of the earlier and well-known mark ‘GREAT
AMERICAN COOKIES’ brand of the Appellant.Appellant has an active presence and participation on various social media platforms andmaintains active social
media handles.
The Appellant has spent a voluminous amount of time, money and effort on the promotion, advertisement and publicity of the present Trademark the world over,
promotional material was filed before us. Appellant’s revenue for the year 2017 was USD 4,753,770, which has led to a substantial amount of goodwill and reputation
in the Appellant’s favour for the present Trademark.
The extensive use of the applied trademark 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’s present Trademark in India, thereby resulting in trans-border and spill over
reputation. Therefore Appellant has acquired and retained an exclusive right to the use of the present Trademark, in respect of goods and services provided by the
Appellant under the provisions of Trade Marks Act, 1999 and also under the principles of Common Law.Appellant’s present Trademark trade mark had already
acquired distinctiveness as of the date of Application No. 2578179.
The Application No. 2578179for the registration of subject trade mark- was filed by the Appellant on 08th August, 2013 with a use claim of 20th July, 2005
before the Trade Marks Registry, Delhi.Thereafter, the subject application was examined and an examination report was issued wherein the following objections on
Sections 9 and 11 of the Trade Marks Act, 1999 were raised:
“1. The trade marks-which are devoid of any distinctive character, that is to say, not capable of distinguishing the goods or services of one person from
those of another person;which consist exclusively of marks or indications which may serve in trade to designate the kind, quality, quantity, intended purpose,
values, geographical origin or the time of production of the goods or rendering of the service or other characteristics of the goods or service;
The Trade Mark application is open to objection on relative grounds of refusal under Section 11 of the Act because the same/similar trade mark(s) is/are
already on record of the register for the same or similar goods/services.The detail of same/similar trade marks is enclosed herewith Save as provided in Sec.
12, a trade mark shall not be registered if, because of-its identity with an earlier trade mark and similarity of goods or services covered by; the trade mark;
orits similarity to an earlier trade mark and the identity or similarity of the goods or services covered by the trade mark,â€
Appellant filed the Reply to the Examination Report vide letter dated 27th January, 2015 and an affidavit of use dated 18 June 2018 was also filed.Subsequent to the
hearing, unimpressed by the submissions and without perusing through all the evidence appropriately, Respondent refused the application by way of a brief refusal order
dated 8th May, 2019. Pursuant to applying, the Appellant received the statement of grounds of refusal dated 26 August 2019. Although the Examination Report contained
objections under both Sections 9 and 11, the Respondent has refused the subject application only under Section 9 of the Trade Marks Act, 1999. Hence the present
Appeal before us
ARGUMENTS MADE BY THE APPELLANT
The learned counsel for the Appellant Mr. HimanshuDeora submitted that the impugned order is bad in law and Respondent has completely disregarded the evidences
and submissions put forth by the counsels for the Appellant during the hearing listed on 22nd April, 2019.The Appellant argued that in case Respondent was not satisfied
with the documents filed to establish use and repute of the present Trademark, he should have provided an opportunity to produce additional documents.
Appellant further argued that regarding the objection on under Section 9(1)(b):
a. the present Trademark- is inherently distinctive as it is a unique logo and is presented in a distinctive manner;
b. the subject trade mark is a unique and fanciful trade mark that is catches the eye of a consumer and is immediately recognizable;
c. the subject trade mark is one which has the ability to create a lasting impact on a consumer’s mind and by virtue of said reason alone, is capable of
being a source identifier akin to no other;
d. the subject trade mark does not contain any element that is non-distinctive or otherwise incapable of distinguishing the goods / services of one person from
those of others;
e. the subject trade mark does not exclusively contain any indications that are descriptive of the characteristics of the services ought to be protected;
f. the present Trademark has acquired a substantial amount of distinctiveness by virtue of the use since 1997 internally and since as early as 2005 in relation
to Indian jurisdiction. Today, the present Trademark is immediately associated with the Appellant;
g. the Appellant has acquired registrations for the present Trademark in various major jurisdictions of the world, which bear testimony to the fact that these
jurisdictions have considered the present Trademark as non-distinctive and/ or non-descriptive of the goods/ services covered thereunder. Hence, the present
Trademark is worth registration.
Counsel for the Appellant also argued that as per well settled judicial principles, a trade mark which has been the subject of voluminous use and has gone on to
acquire secondary meaning is liable to be protected, the present Trademark has gone in trade to acquire secondary meaning in the course of trade and is now inextricably
linked with the Appellant and the Appellant alone. In addition, the impugned order does not contain any finding on Section 11 and therefore, it was argued that the
Registrar was satisfied with the Appellant’s submissions regarding the objections issued on Section 11 of the Trade Marks Act, 1999.
Counsel for the Appellant relied upon the following judgments:
a) Dubai Islamic Bank vs. Union of India &Ors., W.P. (C) 12749/2019- Para-9, 10, 12 - in this case, the Hon’ble Delhi High Court observed that it is a settled legal
position that the Registrar would have to consider all the following factors before rejecting a mark- the character of the mark, the extent of use of the mark, the global
priority in adoption of the mark, the well-known status of the mark, the advertising and promotional investment in the mark, judicial decisions upholding the distinctiveness
of the mark and the localized reputation of the mark.
b) Anil Verma Vs. R.K. Jewellers SK Group and Ors., 2019 (78) PTC 476(Del)) â€" Paragraphs 19 to 24, 29, 33 and 35 - in this case, the Hon’ble Delhi High Court
held that the marks “CASH FOR GOLD†and “WE BUY GOLD†are registrable in respect of Class 14 goods such as gold and precious metals business.
c) Hindustan Unilever Limited Vs Registrar of Trademarks, OA/13/2020/TM/MUM dated 7th August, 2020 - Paragraphs 23 and 26 - in this case the Hon’ble IPAB
observed that “the Hearing officer has failed to take into account that the mark of the Appellant is a unique combination of two common English words which when
taken together results in a composite mark yielding a different and distinctive commercial impression. The Hearing Officer has also erred in not taking into consideration
the numerous registrations and acceptances granted by the Trademarks Office to the other distinctive combination of marks of the Appellant.†The Hon’ble Tribunal
further observed that “Thus in view of such conditions imposed, we agree that the mark “GLOW &HANDSOME†of the Appellant is inherently distinctive in
nature. It is reiterated that the mark of the Appellant is a unique combination of two common English words which when taken together results in a composite mark
yielding a different and distinctive commercial impression as the words put together by the Appellant have distinct meanings by itself and one does not add as an adjective
to the other and are completely unconnected to each other. The application is accepted subject to the disclaimer that the appellant shall nave right to the words GLOW&
HANDSOME if used togetherâ€
FINDINGS
We have examined the Order of Registrar of Trade Marks, Delhi dated 08 May 2019 and the Statement of Grounds of Refusal dated 26th August 2019and reviewed
the submissions of the Appellant. It is noted that the Registrar has not considered the evidence, documents and submissions tendered in support of the subject mark. None
of the documents, submissions, information available prima facie were taken into consideration prior to issuance of the Impugned Order.
The impugnedOrder has not considered the Appellant’s prior and extensive rights in the Appellant's Trade Marks and the various registrations already obtained.
In view of the substantial use of the presentTrademark made by the Appellant, the trademark has acquired a distinctive character and secondary meaning, and is
associated only with the goods and services of the Appellant. Info Edge (India) Pvt. Ltd. vs. Shailesh Gupta 2002 (24) PTC 355 (Del.) was concerned with the granting
of injunction at the instance of prior user ―NAUKRI.COM against the user ―NAUKARI.COM. Both the parties were working in the same field that is business /
employment portal. The court in this case opined that there was peculiarity as the Plaintiff had adopted the Hindi word translated the same into English; hence, the
distinctiveness can be attributed to the name. It was further held that if a product consisting of a descriptive name is marketed in a particular area or place and has gained
reputation and goodwill and that name can be distinguished from its competing products, the product will be protected against descriptive use. The mark was
honestlyadopted and used by the Appellant. A descriptive mark can be registered provided it has acquired secondary meaning M/S Girnar Food & Beverages vs M/S
Godfrey Phillips India Ltd. , 90 (2001) DLT 839. The Appellant had also placed before us the supporting documents to corroborate this.
In Unitech Biotech Pvt. Ltd V. Orchid Chemicals Pharmaceutical Ltd. 2012 (50) PTC 433 (Del) it was contended that when a label mark is registered, it cannot be
said that the word mark contained therein is not registered. Moreover according to Section 9(1) of the Trademarks Act, 1999 that the trademark shall not be refused if
before the date of application for registration it has acquired a distinctive character.The applied trademark has been genuinely, extensively and continuously used by the
Appellant since 1997 internally and since as early as 2005 in relation to Indian jurisdiction.The applied trademark is a distinctive mark. In addition, owing to genuine,
continuous, and extensive worldwide use and promotion of the applied trademark, it has acquired distinctiveness and is associated in the minds of the consumers, the
public in general and the members of the trade.
In Globe Super Parts v. Blue Supra Flame Industries AIR 1986 DELHI 245 it was held that even a common language word can be exclusively appropriated by a
party as a trade mark if the said word has acquired a secondary significance but in the case of a word which is coined, fancy, new or meaningless the claim to exclusive
appropriation is sustainable without the need to prove existence of secondary significance. Therefore, the impugned mark is not descriptive of the services sought to be
covered under it and has no reference to the kind, quality an intended purpose of the services, but is in fact inherently distinctive and is eligible for registration.
The Order of Registrar of Trade Marks, Delhi dated 08th May 2019 and the Statement of Grounds of Refusal dated 26th August 2019refusing the registration of
Trade Mark Application No.2578179 in Class 30 has failed to examine these aspects.
Taking into consideration of the above, the Appeal is hereby allowed. Impugned orders dated 08th May 2019 and 26th August 2019 passed by the Registrar of Trade
Marks are set aside. The Trade Mark Application No.2578179 in Class 30 is allowed to proceed on to advertisement in the Trade Marks Journal. There is no order
regarding costs.