Graduation Management Admission Council vs Registrar Of Trademarks

Manmohan Singh, J

The appellant has filed the present appeal under Section 91 of the Trade Marks Act against the Order dated 3.4.2019 whereby the appellant's

Application No. 2867169 in Class 41 in the name of Graduate Management Admission Council at 11921, Freedom Drive, Suite 300, Reston, Virginia -

20190, United States of America was refused for registration. The said order has been challenged before us.

The brief facts of the case are that the appellant had applied for the registration of the trademark GRADUATE MANAGEMENT ADMISSION

COUNCIL under the Application No. 2867169 in Class 41. The said application was filed on 22.12.2014 by the Appellant claiming use from

01.10.1984. The aforesaid application was examined on 19.01.2016 and a reply to the same was filed on 29.01.2016 by the erstwhile attorneys of the

Appellant. As per the records of the Trademark Registry, it appears that a hearing was appointed on 11.12.2018.

Subsequently, the Appellant sought an adjournments to the hearing vide a request dated 07.12.2018. Thereafter, on 29.01.2019, a request to delete

the use claim of 01.10.1984 was filed. A subsequent hearing was appointed in the matter for 03.04.2019, which was attended by Fidus Law

Chambers. The mark was refused vide order dated 03.04.2019.

The appellant, aggrieved with the above, has preferred the present appeal against the order of the Registrar of Trade Marks dated 03.04.2019.

It has come on record that the Appellant has been using the trademark and tradename GRADUATE MANAGEMENT ADMISSION COUNCIL

since 1976. A certificate, dated 23rd July 1982, issued by the education department of the University of State of New York showing adoption and use

of the subject trademark GRADAUTE MANAGEMENT ADMISSION COUNCIL since 1976 is enclosed as Annexure A with the appeal.

It is also a matter of fact that on 16th July 2019, the trademark registry granted registration for the mark GRADUATE MANAGEMENT

ADMISSION COUNCIL in class 16 for goods covering - ""tests, books, booklets, newsletters, guidance manuals, guides, technical manuals, statistical

reports, research reports, summaries and papers pertaining to examinations used as an aid in determining admission to graduate management schools"".

The acceptance was given on the condition that the mark be used as a whole. A copy of the acceptance order and the registration certificate are also

enclosed as Annexure III with the appeal. Thus, the impugned order is inconsistent in light of the acceptance granted in class 16. The Appellant has

also been granted registration for the trademark GRADUATE MANAGEMENT ADMISSION TEST in class 41 itself in July 2007. A copy of the

registration certificate for the said trademark is also filed with the appeal.

The appellant has agreed for no exclusive proprietorship in individual terms in the subject trademark is claimed by the Appellant, and the composite

mark as a whole is distinctive

The subject trademark applied for is a combination of the terms 'GRADUATE', 'MANAGEMENT', 'ADMISSION', and 'COUNCIL'. Such

combination is exclusively associated with the Appellant only and no one else as per the case of the appellant.

There are other examples of marks in the education industry that are a combination of descriptive terms as Indian Institute of Technology, Indian

Institute of Management etc. and these marks are granted registration by the Trademark Registry. Copies of few registration certificates

demonstrating the same are also filed.

All study materials, the administered test papers, survey reports, research reports, studies, etc. related to the GMAT tests contain clear references

to the subject trademark and tradename GRADUATE MANAGEMENT ADMISSION COUNCIL, demonstrating its source identifying function.

a. A test booklet from the year 1993, demonstrating use of the subject trademark is enclosed as Annexure D to the MP - Vol. II. That, according to a

demographic report published by the Appellant, 4792 candidates from India sat for the GMAT examination in the year 1993-94 - Annexure C to the

MP - Vol. I.

b. A demographic report published by the Appellant in June 1988 [enclosed as Annexure C to the MP- Vol. I, which records the data pertaining to

number of examinees with recordable GMAT scores, identified that 3447 candidates from India tested in the year 1984 to 1985.

c. A demographic report published by the Appellant in November 2015 [enclosed as Annexure C to the MP- Vol. II, identified that 28,325 candidates

from India tested in the testing year 2014.

d. According to the Application Trends survey report of 2003 - enclosed as Annexure C to the MP- Vol. I - India was one of the countries which

showed the greatest increase in Applicants from 2002-2003.

e. An application trends report from the year 2014 enclosed as Annexure C to the MP- Vol. I, the year the subject application was filed, records the

highest number of candidates from India for MBA programs.

f. As per the Geographic trends report dated 30th November 2005 published by the Appellant, which records the geographical and biographical data

for the population of examinees sitting for the GMAT test, India was recorded as the top country in Asia with the highest number of examinees in the

years 2001 and 2005 as Annexure D to the MP- Vol. II.

In its response to the Examination Report, the Appellant had made detailed submissions as to the origin of the trademark, referenced its use since

1st October 1984 and also filed the following documents as evidence of use of the mark GRADUATE MANAGEMENT ADMISSION COUNCIL:

It is submitted on behalf of the appellant that the appellant has been a part of several third party publications where references to the subject

trademark and tradename GRADUATE MANAGEMENT ADMISSION COUNCIL have been made when discussing the goods and services that

the Appellant offers (enclosed as Annexure E - (Vol. II to MP) & (Vol. III to M.P.). A research report published by ETS (Educational Testing

Service) in April 1980, discussing the services offered by the Appellant, while referencing the subject trademark is also enclosed as Annexure E (Vol.

III to MP). The subject trademark GRADUATE MANAGEMENT ADMISSION COUNCIL has been a registered trademark in the United States

of America since 1994, enclosed as Annexure G (Vol. III to MP). Indian and international news/media publications referencing the subject trademark

and tradename GRADUATE MANAGEMENT ADMISSION COUNCIL while discussing the GMAT and NMAT exams, are also filed as

Annexure H (Vol. III to MP).

Case Laws

a. Association for Investment Management vs. The Institute of Chartered Financial Analysts of India 2006 (33) PTC 352 (Del) @ Para 13 - The

court while deciding whether a combination of descriptive terms that form a trademark can be considered distinctive, held that, ""it is clear that the

marks 'CFA' or 'Chartered Financial Analyst' are distinctive marks and even though the words 'Chartered', 'Financial' 6 A third-party news article

discussing the number of test takers for the GMAT exam from India in the year 2008-09 34 Extracts of the Appellant's website at www.gmac.com

37-39 7 and Analyst' are three generic and descriptive terms their use in the given sequence and on account of their use for a long time have acquired

a secondary meaning and have become a trademark entitled to protection. Same is true about the Institute of Chartered Financial Analyst.

No third-party use No third party is using/has used the subject trademark GRADUATE MANAGEMENT ADMISSION COUNCIL to represent

its goods/services (Annexure F - Vol. III to MP).

It is submitted that the impugned order makes no reference to and has failed to consider the response to examination report filed by the Appellant

with supporting annexures showing use of the mark, documents in support of show cause hearing filed by the Appellant discussing the use and

adoption of the trademark GRDAUATE MANAGEMENT ADMISSION COUNCIL.

In the light of material placed on record, it is evident that the impugned order is passed without application of mind and contrary to law. The same

is set-aside. The application is accepted by allowing the appeal, subject to the disclaimer in individual terms in the mark applied for. On the basis of

composite mark, enforcement may be available, however, in the individual terms of the mark, it shall not be enforced under the law of common right.

No costs.