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IN THE HIGH COURT OF JUDICATURE AT BOMBAY
HON'BLE SHRI JUSTICE MANISH PITALE
Khadi And Village Industries Commission - Appellant
Versus
The Registrar Of Trade Marks - Respondent
COMMERCIAL MISCELLANEOUS PETITION (LODGING) NO. 31636 OF 2023
Decided On : 29-01-2025
(A) Trade Marks Act, 1999 - Sections 9(1)(b) and 17 - Refusal of registration of device mark - The petitioner, a statutory body, challenged the refusal of its mark under Section 9(1)(b) on grounds of descriptiveness and similarity to existing marks - The petitioner argued that the mark must be considered as a whole, not in parts, and cited relevant case law - The court found that the Registrar failed to consider the mark in its entirety and ignored significant evidence of use and prior registrations - The court emphasized that registration of a composite mark confers exclusive rights to the mark as a whole, not its individual components. (Paras 1-22)
(B) The court ruled that the Registrar's application of Section 9(1)(b) was erroneous as it did not consider the composite nature of the mark and the statutory provisions of Section 17. (Paras 15-18)
(C) The court highlighted the importance of considering the entirety of the mark in registration decisions, reaffirming that individual parts cannot be assessed in isolation. (Paras 15-19)
Facts of the case:
The petitioner, Khadi and Village Industries Commission, sought registration for its device mark related to paints, which was refused by the Registrar citing descriptiveness and similarity to existing marks. The petitioner argued that the mark had been widely used and promoted.
Findings of Court:
The court found that the Registrar's refusal was based on an erroneous interpretation of the law and insufficient consideration of the evidence provided by the petitioner.
Issues: The main issues were whether the Registrar correctly applied Section 9(1)(b) and whether the mark should be considered as a whole.
Ratio Decidendi: The court held that the Registrar's refusal was unsustainable as it failed to appreciate the mark in its entirety and ignored relevant evidence, emphasizing that registration of a composite mark grants exclusive rights to the mark as a whole.
Result: Petition allowed; the impugned order set aside and application for registration directed to proceed.
JUDGMENT :
MANISH PITALE, J.
in Class 2, has been refused registration under Section 9(1)(b) of the Trade Marks Act, 1999.2. The petitioner i.e. Khadi and Village Industries Commission is a statutory body established by an Act of Parliament and it is an apex organization under the Ministry of Micro, Small and Medium Enterprises, engaged in promotion of Khadi and village industries in rural areas. The petitioner has been using its name “KHADI” on various products for a long period of time and it has spent considerable amount towards advertisement and promotional activities associated with such products. The trade mark “KHADI” of the petitioner has been declared as a well-known trade mark by the Delhi High Court and it is also included in the list of well-known trade marks by the Trade Mark Registry in the year 2022.
3. On 17.12.2020, the petitioner announced the launch of its anti-fungal, anti-bacterial paints, the main component of which is cow dung, under the brand and trade mark “VEDIC PAINT”. These paints were developed and invented by an autonomous research and development body viz. Kumarappa National Handmade Paper Institute, that has also applied for patent titled “Paint Comprising Cow Dung”, which is pending registration.
on 12.01.2021 and that it was launched by the concerned Minister, which generated interest in the media and the public. The aforesaid products were said to have been placed on the official media pages of the petitioner with the brand name 
on social media such as Facebook, Instagram and X. On this basis, the petitioner claims that its aforesaid products under the trade mark 
gathered a lot of attention and viewership in a short span of time. It is further brought to the notice of this Court that the petitioner was granted registration on 11.02.2021 for its word mark “KHADI PRAKRITIK PAINT” in Class 2 in respect of paints, varnishes, distempers, emulsion paints, etc. The user was claimed since 12.01.2021.
On 17.03.2021, the petitioner filed an affidavit of use, with user documents in support of the aforesaid application before the Registrar. On 19.03.2021, the Registrar raised two objections in respect of the said application, one under Section 9(1)(b) of the aforesaid Act, stating that the mark consists exclusively of words which designate the kind and intended purpose of the goods or rendering of service or other characteristics. The other objection was under Section 11(1) of the aforesaid Act, on the basis that a similar mark in respect of identical/similar goods existed and conflicting mark i.e. 
being cited.
The petitioner also relied upon an award dated 03.06.2022 passed by the World Intellectual Property Organization (WIPO), wherein the offending party was directed to transfer the mark in favour of the petitioner.7. During the course of hearing, the petitioner relied upon various judgments passed in the context of device marks. But, by the impugned order dated 17.08.2023, the respondent refused registr
The court established that a composite trade mark must be assessed as a whole for registration, not in parts, and that refusal based on descriptiveness must consider the entirety of the mark.
The central legal point established in the judgment is the requirement for distinctiveness of a mark for registration under Section 9(1)(a) of the Trade Marks Act, and the need for the Registrar to p....
The main legal point established is that a mark should be viewed as a whole and not in parts when determining its distinctiveness under Section 9(1) of the Trade Marks Act, 1999.
The central legal point established in the judgment is the application of Section 11(1)(b) of the Trademarks Act to determine the likelihood of confusion based on phonetic similarity and the priority....
The court emphasized that the petitioner's claim was expansive beyond legitimate bounds, and the use of the word 'KWIK' on one of their many sub-brands could not give them dominance over what had alr....
Registration validity sustained if distinctiveness established over time despite claims of descriptiveness.
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