Lincoln Global, Inc. A Corporation Of The State Of Delaware vs Deputy Registrar Of Trade Marks

S. Usha, J

Appeal arising out of the order dated 08.04.2008 passed by the Deputy Registrar of Trade Marks rejecting the Appellant's trade mark application

No. 1144106 in class 9 for registration.

The Appellant herein had filed an application for registration of the trade mark ""METALSHIELD' in respect of ""Arch welding electrodes"" in class 9

on 17.10.2002. The mark was claimed to be a proposed to be used mark on the date of application. The application was duly examined and an

examination report was sent to the Appellant's agent and a reply was also send by the Appellant's agents to the Trade marks Registry. The Appellant

was subsequently granted a hearing in the matter and the application was rejected under Section 9 of the Trade Marks Act, 1999 (hereinafter referred

to as the Act) on 23.11.2007.

The Appellants counsel filed a request on TM 15 seeking the grounds of decision. The grounds of decision are as follows:

The application for registration of the trade mark ""METALSHIELD"" has a direct reference to the character and quality of the goods. The mark is

incapable of being distinguished within the meaning of Section 9(1)(a) of the Act. Further, the mark is proposed to be used and as such has not

acquired any distinctive character. The trade mark applied also consists exclusively of words which may serve in the trade to distinguish the kind and

quality of goods.

The Appellant herein being aggrieved by the order preferred an appeal on the following grounds:

(a) The impugned order is contrary to law and is therefore, liable to be set aside;

(b) the Respondent erred in stating that the mark is not distinctive as the Respondent failed to view the mark ""METALSHIELD"" as a whole which is

a unique combination of words and has no direct reference to the goods;

(c) the Respondent failed to take into consideration that the trade mark has no direct reference to the goods and is inherently distinctive;

(d) the Respondent failed to take into account the fact that inherent registrability of the mark has been well recognized in other jurisdictions and the

mark ""METALSHIELD"" has been registered in other countries;

(e) the Respondent erred in not allowing the application to proceed for advertisement;

(f) The Respondent failed to consider the fact that the mark satisfies the requirements of a distinctive trade mark and hence does not attract the

provisions of Section 9(1)(a) of the Act.

The matter came up before this Appellate Board on 23.02.2010. Learned Counsel, Ms. Hema appeared on behalf of the Appellant and none

appeared for the Respondent.

The learned Counsel for the Appellant argued that the mark was not distinctive and relied on the registration certificates issued in various other

countries and prayed that the application be proceed to advertisement. The counsel also relied on the judgment reported in 1986 (6) PTC 235 DEL

Globe Super Parts v. Blue Superflame Industries and Anr.

We have heard and considered the argument of the counsel for the Appellant and have perused the documents.

The impugned trade mark was refused registration as per the provisions of Section 9 of the Act. A trade mark shall not be refused registration if

the mark had acquired distinctiveness by use on the date of application for registration. The impugned application has been made on the claim that the

mark is proposed to be used and in that case we are of the opinion that the Registrar was correct in holding that the mark has not acquired

distinctiveness as on the date of application the mark was proposed to be used. The onus always lies on the applicant to prove that the mark has

acquired distinctiveness. The Appellant has not proved the same by any evidence.

The other issue was that the mark was registered in many countries and that registration ought to be granted in India also. We do not know under

what facts and circumstances the registration was granted and that cannot be made applicable herein.

The Registrar has also considered the application to be not registrable in the interest of public at large and to maintain the purity of the Register as

the mark was not capable of distinguishing the applicant's goods from the goods of others, which in our view is upheld.

In view of the above, we do not find any merits in the appeal and hence the appeal is dismissed with no costs.