The central legal point established in the judgment is the strict adherence to the statutory provisions of the Trademarks Act in determining the eligibility for trademark registration, including the requirements for distinctiveness and the prohibition against registration of marks indicating geographical origin.

JUDGMENT (Oral)

C.A.(COMM.IPD-TM) 10/2023, I.A. 5131/2023 (Order XLI Rule 5 of the CPC) and I.A. 5177/2023 (for placing additional documents on record)

1. This appeal assails order dated 9th December 2022, passed by the Assistant Registrar in the Registry of Trademarks, whereby Application No. 3184380, filed by the appellant, seeking registration of the device mark [IMG] has been rejected. The impugned order reads thus:

"With reference to the above and request on Form TM-M dated 17/05/2021. It has been decided by the Registrar of Trade Marks to inform you that hearing in respect of above application was held on 15/04/2021 and the said application is refused on the following Grounds:

*9(1)(a)-The attorney failed to establish the Identity of the mark in applied class. Neither the mark appears to be coined or invented.

*9(1)(a)-The applicant failed to establish the distinctiveness by filing of evidence of use by way of affidavit. ABU DHABI is geographical name (the capital of the United Arab Emirates) and mark as a whole is non-distinctive which cannot be monopolized. Objections raised in examination report sustain accordingly."

2. Assailing the aforesaid order, Mr. Arjun Khurana, learned Counsel for the appellant, submits that neither of the grounds, on which the Assistant Registrar has deemed it appropriate to reject the appellant's application, can sustain on facts or in law.

3. Apropos the finding that the [IMG] mark is not distinctive, Mr. Khurana submits that the finding is completely unsupported by any reason and, even otherwise has, on facts, no legs to stand on. He submits that the [IMG] mark already stands registered in favour of the appellant. As such, there is recognition, on the part of the office of the Registrar of Trademarks, that the device mark [IMG] mark is distinctive and does not infract any of the inhabiting factors envisaged by Section 9 of the Trademarks Act 1999, as would bar registration of the mark. He submits that, if the [IMG] mark is distinctive, the mark cannot lose its distinctiveness by the addition, below it, of the words "ABU DHABI GLOBAL MARKET".

4. With respect to the finding that the mark is not coined or invented, Mr. Khurana has pointed out that the trading name ABU DHABI GLOBAL MARKET of the appellant has been adopted by the appellant under the Federal Laws of United Arab Emirates (UAE), specifically Federal Decree No. 15 of 2013 dated 11th February 2013, issued in the name of the President of the UAE, which states thus:

"A Financial free zone shall be established under the name "Abu Dhabi Global Market"."

5. Mr. Khurana has also drawn my attention to the actual Federal Decree No. 15/2013, which has been placed on record with the present appeal.

6. With respect to the finding that the mark could not be registered as Abu Dhabi is the name of a place and is, therefore, in the nature of a geographical indicator, Mr. Khurana submits that there is no proscription in the Trademarks Act, to registration of a composite mark, a part of which is the name of a place.

7. Apropos the allegation that the application of the appellant was not accompanied by any affidavit of use, Mr. Khurana submits that, where the application is filed on proposed to be used basis, there is no statutory requirement of filing of any affidavit of use.

8. Mr. Srish Kumar Mishra, learned Standing Counsel, appearing for the Registrar, has essentially restricted his submission to the objections relating to Abu Dhabi being the name of a place/geographical indicator and to the finding that the mark is lacking in distinctiveness.

9. Mr. Mishra submits that, as Abu Dhabi is the name of a place and constitutes the most prominent part of the [IMG] mark which was sought to be registered, the learned Assistant Registrar has correctly refused to register the mark in view of the absolute proscription against such registration contained in Section 9(1)(b)^{1[9. Absolute grounds for refusal of registration.-
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