Halal Guys Inc. vs Registrar Of Trademarks

Manmohan Singh, J

The above mentioned appeal has been filed against the order dated march 3, 2020 passed by the senior examiner of trade marks, Mumbai in respect

of trade mark application number irdi-4201793 in class 43 as received on 17th march, 2020 where the application filed by the appellant was rejected.

The Appellant applied for the subject mark on 06/05/2019, which is unique and distinctive in nature,

through Madrid Application by designating India. Upon examination of the said Application, a notification for provisional refusal was issued dated

22/08/2019. The objections raised thereunder are given below:

• Section 9(1)(b):That the mark consists exclusively of words or indications which may serve in trade to designate the intended purpose or other

characteristics of the goods or services.

The Appellant thereafter submitted a response to the provisional refusal on September 26, 2019, relying on the following arguments and documents:

i. Emphasis was placed on the fact that the subject mark is arbitrary in respect of goods/services covered in the application, and that it is highly

distinctive on account of the fact that the mark is a composite mark comprising of visual elements which is an original artistic creation, and thus the

Applicant also enjoys copyright over the mark.

ii. It was argued that the instant mark is of such a nature that it does not qualify the character, nature, description or quality of the goods/services for

which the application has been filed. Further, the instant mark has no dictionary meaning and also has no trade significance, which along with its visual

elements can have no other significance apart from being the trademark of the applicant.

iii. The nature of the mark carries a singular association to the Appellant herein, owing to the same being a depiction of the popularity and goodwill

enjoyed by the Appellant by virtue of the long lines of customers that form around the stalls of the Appellant every day.

iv. The response also pointed out the fact that the subject mark has been filed and granted registration in numerous countries throughout the world,

including the U.S., Canada, and Philippines etc. Furthermore, the fact that the subject mark has been in used since its adoption, added to the level of

distinctiveness in the mark. The same was supported by an Affidavit of Use.

v. To conclude the Appellant also relied on case law by citing Abercrombie & Fitch v. Hunting World, Inc. MANU/FESC/0340/1976 : 189 USPQ 759

and subsequently adopted in India in Caterpillar V. Mehtab Ahmed 2002 CTMR 345) wherein it was held that where a mark is either invented, coined,

fanciful, arbitrary or suggestive, it is to be treated as prima facie distinctive and capable of registration.

vi. The objections having sufficiently been dealt with, warranted that the subject mark ought to have proceeded to the stage of advertisement.

3.1. Thereafter, subsequent to the filing of the response, the matter was appointed for a show cause hearing on 24.02.2020. The matter was duly

attended by the counsel of the Appellant and at the time of the hearing, arguments pertaining to the distinctiveness in the subject mark with respect to

the Appellant were reiterated, as well as the fact that the subject mark was arbitrary with respect to the goods and services, thus not contributing any

descriptive elements. The Appellant's counsel added that the subject mark also enjoyed copyright protection in the name of the Appellant entity owing

to the fact that the subject mark was a unique artistic expression, which can solely and singularly be associated with the Appellant herein.

3.2. The fact that the subject mark had been put to use since its adoption in the year 2000 was also contended, while emphasis was yet again placed

on the registrations and pending applications of the Appellant in the subject mark, as well as the Affidavit of Use filed by the Appellant.

3.3. The Hearing Officer, after hearing our submissions had kept the matter on hold and had not passed an order immediately. Whereupon a routine

review of the matter, the Appellant learned that the instant application had been refused by virtue of order dated March 3, 2020 as uploaded on the

online records of the Trade Marks Office. The order has been passed refusing the application on the ground of objection under section 9 (1) (a) and

9(1) (b) of the Trade Marks Act, 1999.

3.4. Subsequent to the same, the Appellant was served the Confirmation of total provisional refusal from the International Bureau on 17th March,

2020, from which the present appeal is borne.

It is submitted that the Total Refusal order passed by the Senior Examiner of Trade Marks, Mumbai in respect of Trademark application number

IRDI-4201793 in class 43 as received on 17th March, 2020. It is stated by the counsel for the appellant as under:-

a. The Examiner has erred in not taking into account that the instant mark is of arbitrary nature, and further, consisting of a unique artistic device

which is the creation of the Appellant herein, solely bears a reference thereto;

b. That the subject mark was primarily adopted by the Appellant itself in the year 2000 and put to extensive and continuous use, when there was no

such mark in existence. The Examiner has erred in not taking into account the extensive coverage surrounding the Appellant as well as the subject,

which in culmination with the sales of the Appellant, made the subject mark a globally recognized brand with an enviable reputation and goodwill.

c. The order fails to comment upon the extensive and detailed Affidavit of Use filed by the Appellant. The same showing the distinctiveness in the

subject mark, along with the basis for its adoption, and that the subject mark had been put to use despite being filed on a proposed to be used basis,

displayed the association, reputation and goodwill garnered by the Appellant with respect to the subject mark;

d. The order has not commented upon the registrations of the Appellant in the subject mark in various other jurisdictions, or on the fact that the subject

mark also affords copyright protection owing to the same being a unique and creative artistic representation.

e. The Hearing Officer has also erred in overlooking the propositions as laid down by the Hon'ble Courts in relation to the inherent registrability of the

mark as laid down by the Hon'ble Court in Caterpillar V. Mehtab Ahmed 2002 CTMR 345) wherein it was held that where a mark is either invented,

coined, fanciful, arbitrary or suggestive, it is to be treated as prima facie distinctive and capable of registration.

Despite of service, no one appears on behalf of respondent who has also failed to file the counter affidavit. The contention of the appellants have

gone unrebutted.

It has come on record that the Appellant, THE HALAL GUYS began in New York City, the largest city and metropolitan area in the United

States, in about 1990, when the company's founders, exchanged a ""hot dog"" cart they were then operating for a ""halal food"" cart in order to serve the

burgeoning demand for a halal meal, particularly among New York City's Muslim cab drivers. They chose to offer chicken, gyro and rice to make the

meal substantial. The original food cart has been operated continuously every day for the past twenty-nine (29) years, with very few exceptions, and

has served customers even in the middle of hurricanes and snow storms. The business began operating under the name THE HALAL GUYS no later

than November 2000. These same drivers helped spread the word about the brand's unique platter to a much larger, diverse demographic of locals and

tourists eager to experience new and exotic tastes, textures, and flavours. Word of THE HALAL GUYS spread and its reputation quickly exploded,

with daily lines of customers waiting an hour or more, day and night, for their turn to order a meal.

THE HALAL GUYS has over eighty-five (85) store-owned or franchised locations worldwide, including over seventy-five (75) locations in the United

States in twenty major American cities and metropolitan areas, six (6) locations in Manila in the Philippines and one each in Toronto, Canada; Jakarta,

Indonesia; Seoul, South Korea; and London, United Kingdom.

As per evidence placed on record, it is evident that THE HALAL GUYS' international expansion has focused on cities with large Muslim

populations. For instance, THE HALAL GUYS now has a location in Jakarta, Indonesia, home to over 25 million Muslims and six locations in the

Philippines, home to over 5 million Muslims. It is pertinent to mention that in 2014, the Appellant was awarded the Multicultural Award by the

American Muslim Consumer Consortium for their promotion of diversity and multiculturalism, and their inclusivity to all minorities in America.

It is evident that the Appellant has earned and maintained a strong reputation through word-of-mouth, social media advertising, traditional marketing

techniques, and traditional media, including write-ups or mentions by well-known newspapers and magazines. The Appellant maintains an active online

presence through its own website (http://www.thehalalguys.com), pages on social media websites such as Facebook

(https://www.facebook.com/TheHalalGuys/), Instagram (https://www.instagram.com/thehalalguys/), and Twitter (https://twitter.com/HalalGuys).

Its franchising, some individual franchisees have set up social media pages for their respective locations. For example, franchise in San Francisco

(https://www.instagram.com/thehalalguyssfbay/) and Southern California (https://www.instagram.com/thehalalguyssocal/) have Instagram pages, and

another franchise in Houston, Texas has a Facebook page (https://www.facebook.com/thehalalguyshouston/).

There have been numerous articles and stories which have been published in major media outlets over the past decade or more, sharing the story of

THE HALAL GUYS' foundation and expansion and boasting about the quality, value and popularity of its food. These publications include USA

Today, the Wall Street Journal and New York Times - the top three newspapers in the United States measured by circulation, each of which is

distributed internationally and has millions of readers around the world - as well as the TIME Magazine, NY Eater, LA Times, Toronto Star,

Bloomberg, Business Insider, Buzzfeed, Eater Magazine, and many other prominent media outlets. Examples of a few of these are listed below:

(i) For example, an article published March 19, 2010 by the Toronto Star, the most widely circulated newspaper in Canada, calls THE HALAL GUYS

a New York original"" and notes that THE HALAL GUYS was ranked by consumers as ""the fifth-best restaurant in New York City,"" had already

become an ""international phenomenon"" and gained an ""international reputation,"" and was more popular than some of New York City's most famous

skyscrapers and tourism sites, such as the world-famous Empire State Building and Rockefeller Center.

(ii) In an article published June 15, 2014 by The New York Times - which has over four million subscribers and is the fourth most-circulated

newspaper worldwide outside of Asia - titled ""The Halal Guys: Cashing In on Street Cred,"" the Times describes THE HALAL GUYS as ""one of the

longest-running and best-known food-cart businesses in New York City"" and noted that THE HALAL GUYS was ""the first halal cart to secure a

trademark.

(iii) In 2017, The Halal Guys were ranked as the #1 fastest-growing restaurant concept by RestaurantBusinessOnline.com, with The Halal Guys

boasting a year-over-year increase in sales of 740%, nearly six times the single-year growth of the second-ranked restaurant.

(iv) In an article published last year on the website for Business Insider, which has a monthly readership exceeding 20 million, THE HALAL GUYS

CEO Ahmed Abouelenein discussed plans to open ""as many as 400 restaurants globally over the next several years.

(v) According to Bloomberg, one of the largest global business media companies with over 60 million readers, and RestaurantBusinessOnline, THE

HALAL GUYS achieved approximately 20-25 billion dollars (U.S.) in sales in 2016.

It is a matter of fact that the appellant's fame, continually growing popularity and reputation can also be seen through customer feedback.

• For example, its more than 75 U.S. restaurant and food cart locations have been reviewed by consumers on Yelp.com over 31,000 times,

cumulatively, receiving over 12,000 five-star reviews (five stars being the maximum). Nearly two-thirds of all Yelp.com reviews for THE HALAL

GUYS locations were four-star or better and approximately 80% of the reviews were three-stars or better.

• Similarly, on Tripadvisor.com, THE HALAL GUYS has received a 4.5 out of 5 based on nearly 2,300 reviews, 89% of which were four-or five-

star ratings.

• On Facebook, THE HALAL GUYS has received a 4.6 out of 5 based on the opinion of over 3,500 people.

• As noted by the Toronto Star in 2010, THE HALAL GUYS was ranked on Tripadvisor based on consumer reviews as one of the top five

restaurants in New York City, a city that boasts tens of thousands of restaurants. Today, THE HALAL GUYS is still ranked on within in the 98th

percentile of top restaurants in New York City according to Tripadvisor.

• The New York Post calls The Halal Guys ""perhaps the city's most famous open-air dining destination.

• In 2017, THE HALAL GUYS was ranked No. 1 on Restaurant Business Future 50 List.

• The Halal Guys in 2017 was both the #1 most Yelped restaurant and the top restaurant in New York City when asked Siri on an iPhone.

With respect to the mark (hereinafter referred to as the ""subject mark""), it is submitted that the same

is the representation of the long queues which are always seen

next to THE HALAL GUYS cart, with people eagerly waiting for many hours and sometimes even day and night to avail the services of the

Appellant. The same was adopted by the Appellant in the year 2000. The subject mark is a unique visual representation that has been adopted by the

Appellant as a depiction of their vast popularity. The significance it thus carries is a singular association to the Appellant herein, who also holds

copyright protection in the subject mark on account of the same being a creative artistic expression. One is failed to understand, how the mark applied

for offend under Section 9 of the Act if the definition of Section 2(m), 2(z), 2(zb) and 2(zg) and section 2(2)(b) and (c) are read in a meaningful

manner.

The objection raised by the respondent is non application of mind. Thus the impugned order is not sustainable.

Further the Appellant also holds statutory rights in the subject mark by virtue of having registrations and pending applications in various jurisdictions

such as inter alia Australia, Canada, China, Egypt, European Union, India, Indonesia, Japan, Malaysia, Mexico, Pakistan, Philippines, Russia,

Singapore, South Korea, Thailand, Turkey, United Kingdom, the USA, Uzbekistan, and through WIPO. The respondent was duty bound to consider

this aspect of the matter also in its mind. The order like this cannot be passed blindly.

In light of the above, the order dated March 3, 2020, as received on 17th March, 2020 with respect to Trademark application number IRDI-

4201793 for the mark in class 43 is set aside.

The subject mark is directed to proceed to the stage of advertisement in the Trade Marks Journal as per the prescribed provisions of the

Trademarks Act and the Trademarks Rules.

No costs.