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 provide reasons for accepting or rejecting an application for registration.

JUDGMENT (Oral)

C. Hari Shankar, J.

1. This petition under Section 57 of the Trade Marks Act, 1999 seeks cancellation and removal, from the Register of Trade Marks, of the device mark [IMG]

2. Registration was granted, by the Registrar of Trade Marks, for the disputed mark, vide certificate dated 18th June 2021, with effect from 26th May 2008, being the date of application for registration. The impugned mark stands registered under Class 32 in respect of "mineral and aerated waters, all types of non-alcoholic drinks, fruits drinks and fruit juices, shikanji, nimbu pani, soda, soft drinks, lemonades, syrups and other preparations for making beverages".

3. Ms. Kangan Roda, learned Counsel for the petitioner, submits that the impugned mark is liable to be taken off the Register of Trade Marks under Section 57(1) and (2)^{1[57. Power to cancel or vary registration and to rectify the register. -
(1) On application made in the prescribed manner to the High Court or to the Registrar by any person aggrieved, the Registrar or the High Court, as the case may be, may make such order as it may think fit for cancelling or varying the registration of a trade mark on the ground of any contravention, or failure to observe a condition entered on the register in relation thereto.
(2) Any person aggrieved by the absence or omission from the register of any entry, or by any entry made in the register without sufficient cause, or by any entry wrongly remaining on the register, or by any error or defect in any entry in the register, may apply in the prescribed manner to the High Court or to the Registrar, and the Registrar or the High Court, as the case may be, may make such order for making, expunging or varying the entry as it may think fit.]}

read with Clause (a) of Section 9(1)^{2[9. Absolute grounds for refusal of registration. -
(1) The trade marks -
(a) which are devoid of any distinctive character, that is to say, not capable of distinguishing the goods or services of one person from those of another person;
***** shall not be registered:]} of the Trade Marks Act, as, in her submission, the mark "Jain Shikanji", being merely a combination of a common Hindu surname and a reference to the drink which the respondent was making and selling, could not be validly registered as a trademark, as it lacked distinctiveness.

4. On the face of it, the contention is not acceptable. The entitlement of a trademark to registration has to be examined by seeing the mark as a whole, and not by vivisecting it into various parts. As such, the applicability of Section 9(1)(a) of the Trade Marks Act, to the impugned mark, has also to be examined by seeing the impugned mark as a whole.

5. In the first place, it becomes apparent that the impugned mark is not a word mark, but a device mark. The device mark, as it stands, is clearly distinctive. It is not the case of the petitioner that any similar device mark was being used by others.

6. Additionally, even as a word mark, "Jain Shikanji", when seen as a whole, cannot be inherently said to lack distinctiveness. It is not a matter of common usage that a Hindu surname is used as a prefix in a trade mark used for a drink which was being made and sold by the proprietor of the trade mark. Seen as one mark, therefore, "Jain Shikanji" cannot be inherently said to lack in distinctiveness. There are several such marks which stand registered such as, for example, "Delhi Public School".

7. The plea of the petitioner, predicated on Section 9(1)(a) of the Trade Marks Act cannot, therefore, sustain.

8. Ms. Roda chose, thereafter, to abandon Section 9 altogether and urge what, according to her, were technical deficiencies in the grant of registration to the respondent's impugned [IMG] mark. In this regard, she has advanced two contentions.

9. User

9.1. The Registrar has, while granting registration of the impugned mark to the respondent, accepted the plea of user, by the respondent, of the impugned mark with effect from 14th June