Cavium Llc vs Registrar Of Trademarks

Manmohan Singh, J

The present appeal is arising out of the order of the Registrar of Trade Marks Application No. 2884629 for the mark WORKLOAD OPTIMIZED

in Class - 09 in the name of CAVIUM, LLC under Section-91 of the Trade Marks Act, 1999 whereby the appellant's application was refused.

Admittedly, an application was filed by the appellant with the Trade Marks Registry, Delhi on 19.01.2015 for the mark WORKLOAD

OPTIMIZED under Application No. 2884629 in Class-09. The application was subsequently examined and an Examination Report dated January 25,

2016 was issued by the respondent. As per the examination report, the application was objected on absolute grounds of refusal citing the mark and on

relative ground of presence of prior marks

A response to Examination Report with detailed submissions and documents in support of the distinctiveness of the Mark as well as its exclusive

association with the appellant countering each of the objections raised was filed on 23.02.2016.

A request for change of name of the appellant from Cavium, Inc. to Cavium, LLC as well as change of address from 2315 N. First Street, San Jose,

California 95131, United States of America to 5488 Marvell Lane, Santa Clara, CA 95054, United States of America was filed on 26.11.2018 before

the Registry and the same was duly taken on record.

On 24.12.2018, 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 dated 24.12.2018 (hereinafter referred as ""Impugned Order""), in

a mechanical manner without discussing the submissions of the appellant.

The appellant filed a request on FORM TM-M on dated 23.01.2019 for a detailed statement of grounds of the respondent's decision. The statement

of grounds of decision dated 15.02.2019 (hereinafter referred as ""Impugned Decision"") was received by the appellant on 23.02.2019. The Impugned

Decision revealed that the respondent has refused the application citing Sections 9(1)(a), Section 9(1)(b), Section 11(1)(a) and Section 11(1)(b) and

also stating that the User Affidavit along with supporting evidence is not filed.

As per appellant that the WORKLOAD OPTIMIZED is a composite mark comprising of the two words 'WORKLOAD' which means 'the amount

of work to be done by someone or something' and 'OPTIMIZED' which means 'Make the best or most effective use of (a situation or resource)'. The

said two words are arranged together in a unique juxtaposition, such that the computer processor mark, i.e. WORKLOAD OPTIMIZED, bear no

significance or its usual individual dictionary meaning, especially when viewed in relation to goods under class 09 namely ""semiconductors,

semiconductor clips, and semiconductor chip sets; multi-core rise system on chip processors for data centre and cloud application; system on chips for

micro-server and server, Ethernet fabric, software defined networking and network function virtualization processes; microprocessors, customized

microprocessors and related software used in computer and network applications and products; systems and boards used in servers, switches, routers,

gateways, and network accelerators, adaptors, appliances, and other computer, network processing related products:- as are covered under the

appellant's mark. Thus, the mark WORKLOAD OPTIMIZED can be termed as coined and arbitrarily adopted for the appellant's specific goods

without indicating, in any manner, characteristics thereof.

It is admitted position that the appellant has numerous registrations/pending applications across various jurisdictions of the world in Class-09. A few

of such jurisdictions include Canada, China, Hong Kong, India, Japan, South Korea, Mexico, Taiwan and United States of America. It is worthy of

mention that the earliest international registration in the mark WORKLOAD OPTIMIZED dates back to January, 2015.

It is submitted on behalf of the appellant that the appellant maintains and operates its websites at www.cavium.com and www.marvell.com which

are freely accessible throughout the world (including in India) provide exhaustive information about the appellant's business and related goods/services,

thus, enabling its present and potential consumers as well as general public accessing, visiting and viewing the said website from across the world to

relate the mark WORKLOAD OPTIMIZED with none but the appellant solely.

It is rightly alleged on behalf of the appellant that the appellant has earned tremendous goodwill amongst the relevant members of trade and public

globally as well as in India for the mark WORKLOAD OPTIMIZED. 'Youtube' videos featuring the appellant's mark WORKLOAD OPTIMIZED

can be perused at the following links:

• https://www.youtube.com/results?search_query=cavium+ thunderx+workload+optimized

• https://www.youtube.com/watch?v=zmnjZUQPq5U

The mark applied for is a fanciful trademark comprising of the two words 'WORKLOAD' and 'OPTIMIZED' arranged in a unique juxtaposition.

Furthermore, the two concerned words are generally used independent of each other in the English language. But when the said two words are put

together in a particular order or arrangement as in the present case and exposed to the world as a composite trademark, the mark indicates no

meaning or significance, except referring to the appellant and its products.

The presence of the word 'OPTIMIZED' in the mark cannot form the basis for refusing registration thereto. In fact, its presence in the mark is

inconsequential considering that the first and the last impression left by it is that of a unique, coined and fanciful trademark especially due to presence

of the work 'WORKLOAD' which is arbitrary in relation to the concerned Class-09. In this regard, it is also relevant to bring to the attention of this

Tribunal that the respondent has registered several trademarks in Class-09 in the name of different proprietors that incorporate the word

'OPTIMIZED' due to presence of other distinguishing features therein, for example (registered under No. 2863508), and

(registered under No. 2863507) and (registered under No. 3705353). Similarly, it is averred that the word

'OPTIMIZED' per se but on the mark WORKLOAD OPTIMIZED in its entirety.

The appellant has relied upon the judicial precedents of the following cases:

• Procter & Gamble vs. Office for Harmonization in the Internal Market, [2002 RPC 17] (hereinafter the Baby-Dry Case) - The ECJ held that the

mark is registered based on a ""syntactical change"", and each of the two words in the combination may form part of expression used in everyday

speech to describe the function of diapers, their juxtaposition is not a familiar English expression with respect to diapers and that the ""BABY-DRY

mark was sufficiently distinctive and could be trademark subject matter.

• Schering Corporation and Ors. vs. Alkem Laboratories Ltd. (01.12.2009 -DELHC) 2010(42) PTC 772 (Del) - The Hon'ble Delhi High Court held

that trademarks cannot be deciphered or considered separately, i.e. by fragmenting them, but must be taken as a whole.

• Caterpillar Inc. vs. Mehtab Ahmed and Ors. 99 (2002) DLT 678 - It was observed that where a mark is either inventive, coined, arbitrary or a

suggestive word, it has to be treated as prima-facie distinctive and capable of registration. The subject mark is unique and arbitrary for the goods and

services to which the same relates and hence is inherently registrable.

• T.V. Venugopal vs. Ushodaya Enterprises Ltd., (2011) 4 SCC 85) - The Hon'ble Supreme Court recognized the ""imaginative test"". As per the

imaginative test"" followed by the Courts in several countries, to determine if a mark is suggestive or descriptive, a mark to qualify as a suggestive

mark requires the observer or listener to use imagination and perception to determine the nature of goods or services.

In the light of above, it is clear that the appellant's mark WORKLOAD OPTIMIZED is completely different from the Cited Marks on all scales of

visual, phonetic and conceptual comparison, as a result of which there is no scope of confusion between the rival marks. Even otherwise, substantial

reputation and valuable goodwill has accrued to the appellant's mark by reason of long and extensive use, advertisement as permitted under law, sales

promotion and the excellent quality of its goods, due to which the mark is inextricably associated with the appellant and as such there can be no

confusion between its goods and those being made available under any third-party marks, including the Cited Marks.

It is a matter of fact that documentary evidence in support of a bonafide adoption and continuous use of the mark in India had been produced

before the respondent at the time of the formal show-cause hearing held on 24.12.2018. However, the respondent did not consider the said

documentary evidence in toto and incorrectly chosen to refuse.

Therefore, the Impugned Order is set-aside by allowing the appeal, subject to the disclaimer of the word OPTIMIZED.

The application is accepted. The respondent shall proceed further as per rules.

No costs.