Composite device marks should be considered as a whole for registration, and the statutory provision of Section 9(1)(b) should be interpreted without dissecting the mark into its individual parts.

ORDER

Amit Bansal, J. (Oral)

C.A.(COMM.IPD-TM) 8/2023

1. The present appeal under Section 91 of the Trade Marks Act, 1999 impugns the order dated 12th January, 2023 (hereinafter `impugned order') passed by the Registrar of Trade Marks, refusing the registration of the appellant's device mark `CruzOil'/[IMG] (hereinafter `subject mark'), bearing application number 4449921 (hereinafter `subject application') in class 04.

2. The relevant portion of the impugned order is set out below:

"The mark applied for registration is objectionable under S 9(1)(b) of the Trade Marks Act 1999, as it consists of which may serve in trade to designate the kind, intended purpose of the goods or other characteristics of the goods. The applied mark is highly descriptive as it designate the kind and intended purpose of the goods applied for registration. It clearly indicates that the oil is used in Cruz or for Cruz. It is the name of the product. It is not coined nor invented. It cannot be monopolized."

3. Brief facts leading to the filing of the present appeal are set out below:

3.1. On 21st February, 2020, the appellant filed the subject application for registration of the subject mark in class 04.

3.2. On 4th May, 2020, examination report was issued by the Registrar of Trade Marks raising objection under Section 9(1)(b) of the Trade Marks Act, 1999 on the ground that the mark consists exclusively of words that may serve in the trade to designate the intended purpose of the goods.

3.3. On 29th May, 2020, reply to the examination report was filed on behalf of the appellant stating that the subject mark, when considered as a whole, has no dictionary meaning nor is it used in common parlance.

3.4. A hearing notice was issued to the appellant pursuant to which representative of the appellant appeared before the respondent and made his submissions.

3.5. The impugned order dated 12th January, 2023 was passed refusing the subject application of the appellant.

3.6. Accordingly, the appellant has been constrained to file the present appeal.

4. Counsel for the appellant submits that:

4.1. The subject mark is completely arbitrary and does not relate to the goods i.e., industrial lubricants. Therefore, the same is arbitrary and distinctive.

4.2. The word `CruzOil' does not have any dictionary meaning.

4.3. A device mark having combination of words and devices has to be considered as a whole for registration.

4.4. In its trademark application, the appellant has made a disclaimer with regard to the exclusive right to use the word `Oil'.

5. Per contra, counsel for the respondent opposes the present appeal and supports the impugned order passed by the Registrar of Trade Marks. He submits that the grounds for refusal under Section 9(1)(b) of the Trade Marks Act, 1999 are absolute and since the mark is descriptive and designates the kind and intended purpose of the goods, the Registrar has rightly refused the application.

6. I have considered the rival submissions.

7. It is important to bear in mind that the appellant has applied for registration of a composite device mark, which contains the word `CruzOil', along with other elements. However, the impugned order proceeds on the basis that the subject mark is a word mark, `CruzOil' and therefore, treats it as such.

8. The mark having a combination of words and devices has to be considered as a whole for the purposes of grant of registration. The subject mark is a device mark which consists of various unique and arbitrary elements, such as a tagline `Lifeline for Engines', yellow background with two purple rings, unique pattern of semi circles with images of 4 stars on alternative sides with a pattern of slanting parallel lines.

9. At this stage, a reference may be made to Section 9(1)(b) of the Trade Marks Act, 1999, which is set out below:

"9. Absolute grounds for refusal of registration.-(1) The trade marks-

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(b) which consist exclusively of marks or indications which may serve in trade to designate the kin