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Judgment
Manmohan Singh, J
The appellant has filed the present appeal under Section-91 of the Trade Marks Act, 1999 against the impugned order whereby the application for registration was refused.
The Appellant's application for the mark TRIBUTE under No. 2922646 in class 39 for 'travel reservation services', in class 43 for 'temporary accommodation services; hotel and resort services' and in class 45 for 'legal services; security services for the protection of property and individuals; personal and social services rendered by others to meet the needs of individuals; concierge services' was refused by the Respondent on the ground that it is 'purely descriptive in nature' for the services for which registration is being sought.
In the grounds of decision, it was stated that
"Adv. Saumya appeared. I have heard argument and also pursued the documents available on record. The trademark is descriptive, objection under Section 9 is sustained, application is refused for registration."
...
The impugned mark is purely descriptive in nature of the services for which the registration is being sought under the mark. Since the expression TRIBUTE is a common dictionary word having meanings 'something resulting from a particular quality or feature and indicating its worth', therefore is clearly non-distinctive and purely descriptive to the services for which the subject mark has been filed. The mark is not inherently distinctive and can only be registered if it has acquired reputation by virtue of long use and/or acquired the status well-known mark prior to the filing of the application as per the proviso of Section 9 which is not a situation as the present application is concern, admittedly, the present application has been claimed to be used only proposed to be used, therefore, it is of no help to the applicant to overcome the objection under section 9(1)(a) as such.
Therefore, the present appeal is filed, inter alia, on the following grounds:
Meaning of TRIBUTE ignored - Respondent relied on incorrect interpretation
The word 'Tribute' means to show gratitude/respect to a person. The meaning of the word TRIBUTE as explained to the Respondent at the time of the hearing means 'homage', 'mark of respect' or 'samman'. By way of illustration, it was submitted that TRIBUTE is synonymous with homage paid to the then recently deceased Chief Minister of Goa, Shri Manohar Parrikar.
However, the Respondent ascribed another meaning and his interpretation thereof is erroneous. He concluded that TRIBUTE is a common dictionary word, non-distinctive and purely descriptive to the services for which the subject mark has been filed on the basis of an online Google search where the word TRIBUTE means 'something resulting from a particular quality or feature and indicating its worth.
It is argued on behalf of appellant that the respondent incorrectly applied the observations of the Chancery Division in British Sugar Plc v. James Robertson & Sons Limited (1996) RPC 281 in the present case. The observations of Mr. James, Jacob, J. as quoted by the Ld. Senior Examiner have no application in the present scenario. This case dealt with the term TREAT and in the facts of this case, it was held that there is no infringement of a common laudatory term such as TREAT for jams and preserves. The term TREAT cannot be equated with TRIBUTE - which is not a laudatory term.
Respondent equated use of soap for soap to be the same as use of TRIBUTE for the services in question which is wrong in law and fact. TRIBUTE is not generic for 'Travel reservation services' in class 39; 'Temporary accommodation services; hotel and resort services' in class 43 and 'Legal services; security services for the protection of property and individuals; personal and social services rendered by others to meet the needs of individuals; concierge services' in class 45.
It is also submitted on behalf of appellant that the respondent has wrongly applied the observations in Paine & Co.'s Trade Marks (1893 10 RPC 217) in the present case for the following reasons:
A. The case did not deal with the question of inherent distinctiveness of a trademark.
B. In this case, the Court held that duty to maintain purity of Register comes into play for a trademark which cannot in law be justified as a trademark - which is not the case in hand. In fact, the Court specifically observed that the matter is wholly different when the trademark complained of is one which is not in itself illegal or improper. Hence, the case of Paine & Co.'s Trade Marks in fact is to be read in favour of the Appellant rather than against it as TRIBUTE can in law be justified as a trademark, not being illegal or improper.
C. The Respondent stated that it is the duty of the Tribunal to see that "no word 'not adopted to distinguish' shall be put on the Register in the interest of other traders, wholesale and retail, and of the public. If this were not so, the large and wealthy firms with whom the smaller folk are unwilling to litigate, could be a system of log rolling...divide amongst themselves all the ordinary words of description and laudation in the English language". These observations, which are in fact from the case of Joseph Crosfield & Sons Ltd's Appn ((1909) 26 RPC 837), are not applicable in the present case since the mark TRIBUTE is in fact adapted to distinguish the services of the Appellant from those of others and is neither a term of description nor laudation in the English language.
The nature of the word TRIBUTE is such that it is arbitrary as applied to any goods or services. The Respondent has erred in holding TRIBUTE to be purely descriptive. The Respondent has ignored the settled position of law that terms which are arbitrary to goods/services are considered highly and inherently distinctive and deserves the highest level of protection and that these are protected even in the absence of secondary meaning/acquired distinctiveness.
Having considered the material on record, we are of the view that the word TRIBUTE is not and cannot be considered descriptive of the services in question and in fact has a meaning completely unrelated to the nature of services it is applied for. The objection under Section 9(1)(a) could not have been sustained as TRIBUTE is not devoid of distinctive character and incapable of distinguishing the goods/services of one person from those to another.
Case:
Pearl Retail Solutions Pvt. Ltd. vs. Pearl Education Society, AIR 2013 Delhi 181]
Held: This Court is of the view that the word PEARL cannot be said to be a generic word in respect of education and training institute. In the opinion of this Court, a word may be generic qua a specific business or trade or industry but not across the board for all businesses or trades or industries. For instance, word "Arrow" is a generic word qua archery business but is an arbitrary word qua shoes. ... Similarly, PEARL is a generic word qua gems and jewellery business but not with regard to educational business as the said expression has no connection or correlation with education or training services.
The Respondent has also ignored submissions and documents presented to him to show that the mark TRIBUTE is in fact in use.
- Millions of Indians who have visited the Appellant's parent company's (Marriott) hotels and websites have seen the TRIBUTE mark.
- Over 900,000 Indians who are members of Marriott's loyalty program receive direct mail pieces that bear the TRIBUTE mark.
The evidence on record the TRIBUTE mark is in use and acquired distinctiveness was ignored. The Respondent did not consider the fact that TRIBUTE variant - TRIBUTE PORTFOLIO was already registered under No. 3001626 in 43 and under No. 2934641 in class 37 for without any objection under Section 9(1)(a) of the Act and completely ignored the existing statutory rights of the Appellant in India.
The grounds of decision are in discord with the impugned order
While the order of refusal records that the mark is objectionable under Section 9 and Section 11 of the Act, the grounds of decision does not deal with objection under Section 11 at all and records that objection under Section 9 is sustained.
It is also pertinent to mention that in the Order dated 09.04.2019, the Respondent, for the first time, stated the mark to be objectionable under Sections 9/11, whereas neither the Examination Report nor the Grounds of decision relied upon Section 11.
The impugned order is against the principles of natural justice; non speaking order
In not taking into account evidence and submissions not dealing with the same at all, the impugned order has been passed without application of mind and against principles of equity and natural justice. It is arbitrary, unreasoned, bad in law, is contrary to statutory provisions and established principles of law. Further, the impugned order does not outline grounds for refusal and/or materials used by the Respondent in refusing the Application as envisaged in Section 18(5) of the Trade Marks Act, 1999. Thus, prima facie, the impugned order is baseless, arbitrary, without any application of mind and in contravention of Section 18(5) of the Act and thus liable to be set aside.
Cases:
Intellectual Property Attorneys Association vs. The Controller General of Patents Designs & Trade Marks & Anr. [W.P.(C) 3851/2019 & CM Appls. 17546/2019, 29362/2019 decision passed on October 16, 2019]
Held: "...the Registrar of Trade Marks is directed to strictly implement Section 18(5) of the Trade Marks Act by recording in writing grounds for refusal/conditional acceptance and the order containing the grounds of refusal/conditional acceptance be sent to the applicant within two weeks of the passing of the order."
Siemens Engineering and Manufacturing Co. of India Ltd. v. Union of India 1976 AIR SC 1785]
Held: "It is now settled law that where an authority makes an order in exercise of a quasi-judicial function it must record its reasons in support of the order it makes. Every quasi-judicial order must be supported by reasons..."
Asst. Commissioner vs. M/s Shukla & Brothers, (2010) 4 SCC 785
Held: The principle of natural justice has twin ingredients; ... and secondly, the orders so passed by the authorities should give reason for arriving at any conclusion showing proper application of mind. Violation of either of them could in the given facts and circumstances of the case, vitiate the order itself.
In the light of above, the impugned order is set-aside. The appeal is allowed. The application for registration is accepted and shall be proceeded for registration as per rules.
No costs.