• Mohan Dewan

Registration of Trademarks can be refused either under absolute grounds (under section 9 of the Trademarks Act, 1999) or relative grounds (under section 11 of the Trade Marks Act, 1999). Section 9 of the Act lays down the circumstances under which a mark can be recognized as non-distinctive and therefore not fit for registration. In other words, a mark needs to be distinctive in nature. This is to say that a person must be able to distinguish the proprietor’s mark from any other mark in the market. If the proprietor’s mark seems to be similar to any other mark then a likelihood of confusion is bound to arise as the consumers will associate both marks with one another. Both marks ought to have stark differences in them so as to avoid market confusion.

Section 9 states that a trademark can be distinctive in nature when:

1.  The goods and services of one person can be easily distinguished from that of others merely by way of a glance at the marks.

2.    Any mark adopted by the proprietor should not be indicative of any kind, quality, quantity, purpose of the goods and services, geographical origin, values and characteristics of the goods and services.

3.    Finally, any mark adopted by the proprietor should not become customary in the current language or in the bona fide and established practices of the trade.

Distinctiveness of a mark is very elaborately determined in a recent case of Abu Dhabi Global Market v. Registrar of Trademarks, Delhi
C.A.(COMM.IPD-TM) 10/2023, the Delhi High Court overturned the refusal Order of the trademark 'pronounced by the Assistant Registrar of Trademarks. The applicant of the trademark is Abu Dhabi Global Market (ADGM) which is an international financial centre and free zone located on Al Maryah Island in the United Arab Emirates's capital, Abu Dhabi. This global market houses various Local & International Enterprises
& Institutions and gives it a secure platform to establish operations and fulfil their expansion. ADGM had applied for the mark '' which was rejected. The Registrar of Trademarks stated the following reasons for refusal:

1.    The mark is devoid of distinctiveness and therefore does not seem to be coined or invented.

2.    The mark includes ‘ABU DHABI’ which is a geographical origin thus being non-distinctive.
ADGM stated that a major part of the applied mark 'was already registered to establish its distinctiveness. The other half part of the composite mark which consists of ‘ABU DHABI GLOBAL MARKET’ had been adopted by the applicant under the Federal Laws of United Arab Emirates (UAE) – Federal Decree No. 15 of 2013 dated 11th February 2013. Therefore, ADGM had the right of using ‘ABU DHABI’ in its logo.

On hearing both sides, the Court observed faults in the order passed by the Registrar in the present application. At the outset, the Order was worded absurdly. The Court stated that when it comes to trademarks there are no requirements for a mark to be ‘coined’ or ‘invented’ for its registration. A mark certainly needs to be distinctive but not inventive. Additionally, it was also observed that a user affidavit does not establish the distinctiveness of the mark. Distinctiveness is established only when the mark is able to distinguish the proprietor’s goods and services from that of other persons.

The Court upheld the aforementioned reasoning given by the applicant and stated that the composite mark applied for is distinctive as the Applicants are rightfully allowed to use ‘ABU DHABI’ in their trademark. Therefore the Court ordered the following in favour of the applicant and the well-being of the trademark thereof:

1.    The Order passed by the Assistant Registrar was quashed.
2.    The affected application (Application number - 3184380) was allowed to proceed with an advertisement in the Trademarks Journal.

Upon a cursory glance of the yardsticks laid down by the section, it is settled that a trademark should be adopted in a way that it is able to distinguish the goods and services of the proprietor from that of other persons. No matter how simple the mark (word and/or device) is, it can be considered as distinctive if no one else is found using it, or even variations of it. For instance, the well-known mark ‘Apple’. Whenever one refers to ‘Apple’ or the device  the very first thing that comes to mind is the electronic devices sold under the marks. Here, the device and word mark are said to have distinctiveness. In no way can the word and device cause confusion in the minds of consumers.

If a mark is capable of creating a clear distinction in the minds of the consumers with respect to the goods and services, then the mark can be considered distinctive without a grain of doubt.


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