Article
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June 19 2023
'CruzOil' being a composite mark is excluded from Section 9(1)(b)
Delhi High Court: In a case wherein an appeal was filed under Section 91 of the Trade Marks Act, 1999 (‘Act’) challenging the order passed by the Registrar of Trade Marks (‘Registrar’), wherein the registration of the appellant's device mark ‘CruzOil’/ (‘subject mark’) was refused, a Single Judge Bench of Amit Bansal, J. opined that ‘CruzOil’ being a composite mark was excluded from Section 9(1)(b) of the Trade Marks Act and was registrable. The Court allowed the appeal and thus, had set aside the impugned order.
Background The appellant filed the subject application for registration of the subject mark in Class 4 and an examination report was issued by the Registrar raising objection under Section 9(1)(b) of the Act, on the ground that the mark consisted exclusively of words that might serve in the trade to designate the intended purpose of the goods. In 2023, the impugned order was passed refusing the subject application of the appellant. Thus, the appellant filed the present appeal.
Counsel for the appellant submitted that the subject mark was completely arbitrary and did not relate to the goods i.e., industrial lubricants and therefore, the same was arbitrary and distinctive. Further, it was submitted that the word ‘CruzOil’ did not have any dictionary meaning and a device mark having combination of words and devices had to be considered as a whole for registration.
Counsel for the respondent submitted that the grounds for refusal under Section 9(1)(b) of the Act were absolute and since the mark was descriptive and designated the kind and intended purpose of the goods, the Registrar had rightly refused the application.
Analysis, Law, and Decision The Court noted that the appellant had applied for registration of a composite device mark, which contained the word ‘CruzOil’, along with other elements, however, the impugned order proceeded on the basis that the subject mark was a word mark, ‘CruzOil’ and therefore, treated it as such.
The Court opined that the mark having a combination of words and devices had to be considered as a whole for the purposes of grant of registration. The subject mark was a device mark which consisted of various unique and arbitrary elements, such as a tagline ‘Lifeline for Engines’, yellow background with two purple rings, unique pattern of semi circles with images of 4 stars on alternative sides with a pattern of slanting parallel lines.
The Court relied on Abu Dhabi Global Market v. Registrar of Trademarks, Delhi, 2023 SCC OnLine Del 2947, wherein a Co-ordinate Bench of this Court had interpreted Section 9(1)(b) of the Act in respect of composite marks and opined that “composite marks ipso facto stand excluded from the scope of Section 9(1)(b) of the Act, even if part of such marks consist of marks or indications which serve, in trade, to designate the geographical origin of the goods or services in respect of which the mark was registered. The “dominant part” principle was alien to Section 9(1)(b). It could not co-exist with the “exclusivity” principle which finds statutory place in the provision. Section9(1)(b) used the word “exclusively”. The use of the word “exclusively” completely forecloses any argument predicated on the “dominant part” principle. It was only if the entire mark exclusively falls within one of the excepted categories envisaged by Section 9(1)(b) that the registration of the mark could be treated as statutorily proscribed”.
Thus, the Court opined that the Registrar erred in dissecting the subject mark into its individual parts while considering registration. The Court noted that there were other composite marks containing the word ‘Cruz’ that had been registered under Class 4. The Court also noted that the appellant had given a disclaimer with regard to exclusive right to use the word ‘Oil’.
The Court allowed the appeal and thus, had set aside the impugned order. Further, the Court directed the Trade Marks Registry to proceed with the advertisement of the subject application as per the proviso to Section 20 of the Act.
