Cathay Pacific Airways Limited vs Registrar Of Trade Marks

The present Appeal is filed under Section 91 against the Order dated 17/10/2019 against the refusal of application for the Trademark “

†vide application No.3276020 in class 43 for services related to Provision of food and drinks; restaurant, bar, cafes,

cafeterias, lounges, self-service and buffet restaurants; child care services; catering services; providing food and beverage services at airport lounges;

temporary accommodation services; booking services for hotel and holiday accommodation; arranging holiday accommodation; reservation and

information services relating to hotels; all for members of a frequent travellers club and/or business and/or first class travel passengers of Cathay

Pacific Airways Limited.

An application was filed by the Appellant with the Trade Marks Registry, Delhi on 03.06.2016 for the word mark “ †under Application No.

3276020 in class 43. The application was subsequently examined and an Examination Report dated October 28, 2016 was issued by the Respondent.

As per the examination report, the application was objected on relative grounds of refusal citing presence of prior Registered marks. The Appellant

submitted that however none of the cited marks stated in the search report accompanied with the examination report were valid objections either due

to priority in adoption/use of the subject mark, abandonment/ refusal of cited mark or the fact that the cited marks belonged to the Appellant herein. A

response to Examination Report with detailed submissions countering the objections raised was filed on 23.01.2017.

On 25.06.2019 and 17-10-2019, a formal show-cause hearing was scheduled before the Respondent. While submissions and arguments were put

forth on behalf of the Appellant, the Respondent was reluctant to drop the objections and passed an order on 17-10-2019 and subsequently statement

of grounds provided for the said order dated 06.02.2020 (hereinafter referred as â€Impugned Orderâ€) in a mechanical manner without discussing the

submissions of the Appellant.

The Appellant filed a request on Form TM-M on dated 18.10.2019 for a detailed statement of grounds of the Respondent’s decision. The

statement of grounds of decision dated 06.02.2020. Aggrieved by the said impugned order the present appeal is filed on 08.05.2020.

The Appellant argued that the Respondent while passing the impugned order has not dropped the objections under Section 11 raised in Examination

Report and stated that the Appellant cannot take shelter under Section 12 as bonafide and Honest and concurrent usage, since the mark is filed as

proposed to be used, so as to provide the benefit under section 12 of the Trademark Act, 1999. However during arguments when this Appeal came up

for hearing before this Board on 22- December 2020 the Appellant stated that it is already using the mark in the commerce and thus this Board

granted liberty to amend the claim of user vide the order dated 22nd December 2020, subsequently the Appellant had filed the request on Form TM-M

dated 16/01/2021 before the Registrar of Trademarks, Delhi for amending the use date in the subject application from ‘Proposed to be used’ to

‘08-July-1994’. In this regard, the Appellant had also filed before this Board the affidavit of compliance dated 18/01/2021, along with the said

use amendment request on Form TM-M dated 16/01/2021 and the extensive evidence of use.

We have examined the Affidavit and usage documents filed by the Appellant which are as follows: -

a. An article dated 08th July 1994 from New York Times stating about the Appellant’s Marco Polo Club loyalty services (attached herewith as

Annex-A1 and also filed at Pg-44 to 46 with the Affidavit of compliance filed on 18/01/2021).

b. Extract of Marco Polo Club booklet evidencing the use of MARCO POLO CLUB in respect of restaurant services (attached herewith as Annex-

A2 and also filed at Pg-109-110 with the Affidavit of compliance filed on 18/01/2021)

c. An article evidencing that Cathay Pacific has been serving India since 1982 (attached herewith as Annex-A3 and also filed at Pg-26 to 30 with the

Affidavit of compliance filed on 18/01/2021)

d. An Article of Business Standard evidencing that Cathay pacific began flying to India in 1982 and the first flight was to Mumbai (attached herewith

as Annex-A4 and also filed at Pg- 31 to 36 with the Affidavit of compliance filed on 18/01/2021)

e. An extract of YouTube video evidencing use of MARCO POLO (attached herewith as Annex-A5 and also filed at Pg-258 with the Affidavit of

compliance filed on 18/01/2021)

The case of the Appellant is that the cited marks by the Examiner the mark “Cathay Pacific†is owned by the Appellant itself while the mark

“MARCO POLO CLUBâ€​ co-exists with other marks and benefit of Section 12 can be provided to the Appellant.

The Appellant submitted that it uses a suite of trade marks including the core and dominant element CATHAY PACIFIC, the brush wing device

and/or the CATHAY PACIFIC and brush wing device combination such as , ,

,

,  ,       (hereinafter

, , (hereinafter collectively referred to as the “Appellant’s Trade Marksâ€).That the mark CATHAY PACIFIC is the core and distinctive

element of the Appellant’s trade name and also its house mark under which its business activities are promoted.

The Appellant honestly adopted the arbitrary combination of the terms “MARCO POLO CLUB†along with the CATHAY PACIFIC and

brush wing device combination since at least as early as the year 1990. Use of the current version of the resultant unique mark

(hereinafter referred to as the “Subject Trade Markâ€) by the Appellant, dominates and is well-known in the market and

such use has therefore become associated with the Appellant. Further, the Subject Trade Mark has been used by the Appellant in respect of the

subject services since at least as early as 08th July 1994. The reputation gained worldwide and in India, as a result of the quality of the products and

services marketed by the Appellant under the Subject Trade Mark is a total association in the mind of the general public with the Appellant alone.

The Appellant submitted that it also applied for and registered the Appellant’s Trade Marks worldwide including but not limited to Australia,

Bahrain, Bangladesh, Brunei Darussalam, Cambodia, Canada, China (People's Republic), European Union, Hong Kong, Indonesia, Japan, Korea,

Macao, Malaysia, Mexico, Myanmar, Nepal, New Zealand, Pakistan, Philippines, Qatar, Russian Federation, Saudi Arabia, Singapore, South Africa,

Sri Lanka, Switzerland, Thailand, Turkey, United Arab Emirates, United Kingdom, United States of America, Vietnam etc.

The Appellant also submitted that it owns the domain name www.cathaypacific.com(registered on 15-Sep-1995 with the corresponding website

being accessible to the public at large, consumers and the members of the trade. By sheer virtue and nature of the internet, the Appellant’s site is

accessible worldwide including to the public in India who are well aware of the repute of the Appellant’s Trade Marks including but not limited to

the Subject TradeMark . Â That the number of visitors from India on the website of the Appellant is around 1,354,086 for

www.cathaypacific.com and 64,348 for the Marco Polo Club section on www.cathaypacific.com in the past one year (i.e. from February 2019 to

January 2020). There would have been correspondingly similar numbers in previous years over the past five years or so. Moreover, the use of its well-

known trademark/ trade name CATHAY PACIFIC in its domain name assists the Appellant in establishing an identity for its websites; users of the

internet readily recognize that these domain name point to the website of the Appellant. The Appellant’s goods/ services bearing the Subject

Trade Mark are prominently displayed and advertised on the website under the said domain name.

The Appellant submitted that the Marco Polo Club is an exclusive loyalty programme operated by the Appellant which offers privileges to frequent

flyers of the Appellant, and its subsidiary Cathay Dragon. As of 2018, it has more than 11 million members.

The Appellant further submitted that the cited mark MARCO POLO under Registration No. 1242208 in class 42 to be similar to the Subject Trade

Mark of Appellant has been adopted after the adoption of the marks of the Appellant. It is a well settled principle of Trademark Law that prior use of

the goods/services will override the subsequent user, even though subsequent user has a registered trademark. It is submitted that as can be gauged

from the intention of the legislature, the said provision must equally apply to a previously filed and yet pending application. Thus, the rights conferred

only by the registration of trademark are subject to the rights of the prior user of the mark. Statutory recognition to the aforesaid principle can be

found under Section 34 of the Trademark Act, 1999 which enumerates that “a registered proprietor or registered user of a trademark cannot

interfere with the use of any identical or similar mark if a person has been using a mark from an earlier date†and the “Registrar shall not refuse

(on such use being proved), to register the second mentioned trade mark by reason only of the registration of the first mentioned trade markâ€. Apart

from the above, the Appellant due to its continuous and extensive use of the trade mark MARCO POLO by the Appellant since 1990 and use of the

Subject Trade Mark since 08-July- 1994, the Appellanthas acquired honest and prior rights in the said trademark. The application for the cited mark

has been filed on a ‘Proposed to be used’ basis and therefore, in light of the actual use of trade mark MARCO POLO by the Appellant since

1990 and use of the Subject Trade Mark since as early as 08-July-1994, inter alia, in respect of the subject services which is prior to the date of filing

of the cited mark, the above stated statutory provision and the judgments propounded, there exists no reason for the Respondent to refuse the

registration of the Subject Trade Mark.

The Appellant further submitted that the Mark incorporates the Appellant’s house mark CATHAY PACIFIC and therefore, the Subject

Trade Mark is associated with the Appellant alone and the Appellant has already secured registration for the Subject Trade Mark- in 16, 35 and 39, as

mentioned hereinabove and the Appellant has also placed reliance on various precedents laid down in the following cases:-

a. Syed Mohideen vs. P. Sulochana Bai (17.03.2015 - SC): MANU/SC/0576/2015

b. Century Traders v. Roshan Lal Duggar Company AIR 1978 Del 250

c. Jolen Inc. v. Doctor and Co. (2002) PTC 29 (Del)

d. Neon Laboratories Ltd. vs. Medical Technologies Ltd. and 2 Ors. (19.12.2005 - GUJHC) : MANU/GJ/0126/2006

e. M/s R. J. Components and Shafts vs. M/s Deepak Industries Limited.

The Appellant argued that in view of the material placed on record and on account of honest adoption, continuous use, extensive sales and sales

promotional schemes, excellent quality control and aggressive marketing, the Subject Trade Mark has acquired enviable

goodwill and reputation and has become distinctive of the services and business of the Appellant in India to the exclusion of others. The Subject Trade

Mark has come to be inextricably associated with the Appellant. The Respondent has  disregarded these significant facts

while passing the Impugned order.

The Appellant further stated that the other cited mark MARCO POLO under Application No. 1265876 as cited to be similar to the Subject

Application currently stands ABANDONED and an abandonment order to that effect has been issued by the Trade Marks Office. Further the cited

mark MARCOPOLO under Application No. 2802780 in class 43 as cited to be similar to the Subject Application currently stands REFUSED and a

refusal order to that effect has been issued by the Trade Marks Office.

The Appellant stated that, the trade marks CATHAY PACIFIC WITH WING LOGO, Now you’re really flying, CATHAY PACIFIC,

CATHAY PACIFIC HOLIDAYS (LABEL) and CATHAY PACIFIC AND LIFE WELL TRAVELLED under Registration Nos. 1288999,

1406240, 2244328 and 2831609 (respectively) in classes 42 an 43 which are considered to be similar to the Subject Trade Mark stand in the name of

the Appellant itself and do not form valid objections. In fact the Respondent has itself, imposed a condition in the examination report to associate the

Subject Trade Mark with the aforementioned registration numbers.

The Appellant further submitted that in compliance of the directions passed by this this Board during the hearing on 22nd December, 2020, the

Appellant has duly filed before the Trademarks Registry a request on the form TM-M dated 16th January, 2021 for amending the use date in the

subject application under appeal, from “Proposed to be used†basis to “08th July, 1994â€.That the Appellant has submitted extensive evidence

substantiating the use of the subject trademark since 8th July, 1994. Copies of some of the documentary evidence corroborating the Appellant’s

claimed use is attached herewith.

In view of the circumstances mentioned above, since the usage of the mark by the Appellant dates back 08th July 1994 and an appropriate

application has been moved by the Appellant to amend the user that is wrongly filed earlier as “Proposed to be used†filed by the Appellant with

sufficient documentary evidence, the present appeal is allowed setting aside the impugned order dated 17th October 2019 and statement of grounds

provided on 06th February 2020. The Respondent is directed to accept the amendment application and change the user date as requested and

consequently accept the application. The application of the appellant shall proceed further in accordance with law.

There shall be no orders as to the costs.