Phytex, Llc, A Maine Limited Liability Company vs Deputy Registrar Of Trade Marks, Trade Marks Registry

S. Usha, J

The Appellant herein filed an application for registration of the trade mark OPTIPHOS under application No. 1323104 in class 5 in respect of feed

supplements for livestock on 30.11.2004. The mark was claimed to be proposed to be used on the date of application. The same was advertised

before acceptance in the Trade Marks Journal No. 1331 (1) dated 15.08.2005 at page 1307. The said mark was refused registration under Section 9

of the Trade Marks Act, 1999 (hereinafter referred to as the Act) as it was not distinctive of the goods and also the Respondent had issued a notice

under Section 18(4) read with Section 19(1) of the Act for withdrawal of acceptance. The applicant filed form TM-15 for grounds of decision. The

Appellants were given an opportunity of being heard on 5.12.2007 and the impugned order was passed. The Registrar had passed the impugned order

on the ground that the application was not maintainable as feed supplements for livestock was covered under class 31 and not under class 5 and the

applicants had also not used the impugned mark till date i.e. till 2008 though the application was filed in the year 2004. The mark was descriptive in

nature which was coined from two descriptive words 'Optimum' and 'Phosphate' which does not qualify for registration in terms of Section 9(1) (a) of

the Act and therefore refused registration under Section 9 of the Act and also on account of the fact that it has been filed in a wrong class. Aggrieved

by the said order the Appellant has filed the instant appeal. The main grounds of appeal are as follows:

(i) The Respondent erred in not giving an opportunity to the Appellant to file evidence to strengthen their case.

(ii) The Respondent erred in not raising an objection under Section 9 of the Act in the Examination Report, but had dealt with the same in the

impugned order, for which the Appellant was denied an opportunity of submitting his defence

(iii) The Respondent erred in finding that the mark is descriptive in nature being coined from two descriptive words 'Optimum"" and 'Phosphate' and so

the mark does not qualify for registration under Section 9(1) (a) of the Act.

(iv) The Respondent erred in not giving due weightage to the fact that the mark has been registered in foreign jurisdiction such as the United States of

America and the European Union.

(v) The Respondent erred in strongly interpreting the goods feed supplements for livestock as falling under class 31 and not class 5.

(vi) The Respondent erred in not allowing the application to proceed to advertisement.

We heard Ms. Aga Arvind learned Counsel for the Appellant on 25.2.2010.

Learned Counsel for the Appellant reiterated what was stated in the grounds of appeal and prayed that the appeal be allowed directing the

Registrar to allow the application to proceed for registration.

We have heard and considered the arguments of learned Counsel for the Appellant. We agree with the finding of the Deputy Registrar that the

application filed under a different class is not maintainable. We are of the view that the goods ""feed supplements for livestock"" falls under class 31 and

not under class 5 as claimed by the Appellant. Feed supplement is an addition to what is consumed as food. It is not a medicine but an extra supply of

food like malt etc.

The mark was applied for registration in the year 2004 as a proposed to be used mark and as such there is no use to make the mark to acquire

distinctiveness and is thus a bar under Section 9 of the Act.

The other averment of the Appellant was that the impugned trade mark OPTIPHOS is registered in other countries. We are not aware as to under

what circumstances the mark was registered in those countries as there could be difference in law. Mere registration of the trade mark in other

countries cannot be a valid ground for obtaining registration in India.

In view of the above, we dismiss the appeal with no order as to costs.