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Judgment
Prathiba M. Singh, J
This hearing has been done through hybrid mode.
These are three appeals challenging the impugned orders by which the office of Registrar of Trademarks has refused the applications of the Appellant for the registration of following trademarks:
S.
No.
Trade mark Appn. No. &
Date
Class & Services
Date of impugned
order
Mark
1.
3306596
&
11th July, 2016
Class: 41
Education, Providing of Training, Entertainment, Educational training and instructional services, conducting training programmes, seminars, conference, workshops, conventions, assemblies, editing, fashion shows for entertainment purposes, forming an organization and clubs included in class-41
1st March 2021
ACHIEVERS ACADEMY
2.
3306595
&
11th July, 2016
Class:35
Advertising, Business management, Marketing of products Business administration marketing of products using and with aid of brochures, handbooks manuals, Stationary items and training materials included in class-35
26th February 2021
ACHIEVERS ACADEMY
3.
3306593
&
11th July, 2016
Class:41
Education, providing of training, entertainment, educational training and instructional services, conducting training programmes seminars, conferences, workshops, conventions, assemblies, editing, Fashion shows for entertainment
purposes, forming an organization and clubs included in class-41
1st March, 2021
The Appellant-M/s Modicare Limited is involved in direct selling business in India since 1996 and has more than 50 lakhs active consultants catering to over 2700 cities across the world. For the said direct selling business, it adopted the following device mark in the year 2015:
The mark ‘ACHIEVERS ACADEMY’ was coined in respect of events/programs done for honouring its high achieving consultants in order to boost their confidence. The said step was taken as a human resource measure to recongnise the achivements of the consultants in fulfilling various targets.
The said mark, after adoption, has been applied for registration under various classes. The trademark ‘ACHIEVERS ACADEMY’ is registered in class 35 as a device mark bearing trade mark number 3306592 and in class 45, both as word mark and device mark bearing trade mark numbers 3306597 and 3306594 respectively. In the present three appeals, the mark ‘ACHIEVERS ACADEMY’ has been rejected by the Registrar of Trademarks on the basis of several marks which have been cited in the examination report, which have the word ‘ACHIEVERS ACADEMY’.
Ms. Rajeshwari, ld. counsel, appearing for the Appellants submits that most of the cited marks are not in use. Furthermore, the Appellant has been using the mark ‘ACHIEVERS ACADEMY’ with the house mark of the Appellant being ‘MODICARE’. She also submits that the mark ‘ACHIEVERS ACADEMY’ has been used extensively by the Appellant since the year 2015 and has also acquired distinctiveness. She submits that the rejection of the mark ‘ACHIEVERS ACADEMY’ would cause grave injustice to the Appellant which has invested in the mark.
Mr. Harish, ld. CGSC appearing for the Respondent submits that there are identical applicants/registrants of the mark ‘ACHIEVERS ACADEMY’ as is evident from the examination reports. The details of the cited marks is as under:
application
number
Mark
Class
Status
1309027
41
Registered
1357942
Achievers Academy
41
Examination
Report issued
2296486
41
Objected
2671855
41
Objected
1201081
Achievers International
16
Registered
2053188
16
Opposed
2458618
16
Objected
2522460
Achievers
16
Objected
2690388
16
Objected
3210320
Achievers Point
16
Objected
2256639
35
Registered
1271322
Achievers (Label)
41
Registered
2432932
41
Objected
b
A perusal of the cited marks shows that there are various identical applications/registrations for the mark ‘ACHIEVERS ACADEMY/ACHIEVERS’. In respect of Appellant’s application no. 336596, the Registry has cited 4 marks in the examination report. Out of the said four marks, one of them is stated to have already been removed from the register. Remaining three marks are not being used by the applicants/proprietors as per the Appellant. Insofar as other marks are concerned, they are consisting of either the word ‘ACHIEVERS’ or ‘ACADEMY’.
In any event, the Appellant itself has used the mark ‘ACHIEVERS ACADEMY’ along with the house mark ‘MODICARE’. Turnover of the Appellant by the usage in its direct selling business is also quite high.
After taking an overall view of the matter, this Court is of the opinion that the applications filed by the Appellant be proceed for advertisement, subject to the following conditions:
(1) In each of the applications, the house mark ‘MODICARE’ shall be added by filing a specific Form by the Appellant as a prefix to the mark ‘ACHIEVERS ACADEMY’.
(2) All three applications shall be associated with the registered trademarks bearing no. 3306592, 3306594, and 3306597 of the Appellant in classes 35 and 45.
(3) The description of the goods in all the applications shall be confined to direct selling business in the following manner.
“Education, providing of training, entertainment, educational training and instructional services, conducting training programmes seminars, conferences, workshops, conventions, assemblies, editing, Fashion shows for entertainment purposes, forming an organization and clubs included in class-41 in respect of direct selling business.
And
“Advertising, Business management, Marketing of products Business administration marketing of products using and with aid of brochures, handbooks manuals, Stationary items and training materials included in class-35 in respect of direct selling business”
Steps be taken by the office of the Registrar of Trade Marks, as directed above. It is made clear that if any third party opposes any of the marks of the Appellant, the same shall be adjudicated in accordance with law without being affected by the observations made by the Court in the present order.
All the three appeals, along with all pending applications, are disposed of in the above terms.