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IN THE HIGH COURT OF DELHI AT NEW DELHI
Prathiba M. Singh, J.
Fluke Corporation, 6920 Seaway Boulevard Everett, Washington 98203, Usa – Appellant
Versus
Registrar of Trademarks Boudhik Sampada Bhavan, Plot No. 32, Secstor-14, Dwarka, New Delhii – Respondent
C.A.(COMM.IPD-TM) 47 of 2022
Decided On : 16-08-2023
Trade Marks Act - Trademark Application - Section 9(1)(b) - [DATAPAQ] - [Trademark Application] - [Section 9(1)(b)] - The court discussed the provisions of Section 9(1)(b) of the Trade Marks Act, 1999, which deals with the registration of descriptive marks and the requirement of acquiring secondary meaning. The court highlighted the need to consider the distinctiveness of marks and the extent of usage, along with the settled legal position that descriptive marks can be registered if they acquire secondary meaning. The court emphasized that the reasoning provided in the impugned order was unsustainable as it did not consider whether the mark had acquired secondary meaning.
Fact of the Case:
The Appellant filed a Trademark Application for the mark 'DATAPAQ' in Class 9, which was rejected under Section 9(1)(b) of the Trade Marks Act, 1999 on the ground that it was descriptive of the goods and services. The Appellant amended the description of goods and sought registration of the mark as a word mark.
Finding of the Court:
The court found that the reasoning provided in the impugned order was unsustainable as it did not consider whether the Appellant's mark 'DATAPAQ' had acquired secondary meaning. The court held that the mark deserved to proceed for advertisement subject to certain conditions.
Issues: The main issue was whether the Appellant's mark 'DATAPAQ' should be rejected under Section 9(1)(b) of the Trade Marks Act, 1999 on the ground that it was descriptive of the goods and services.
Ratio Decidendi: The court emphasized the need to consider the distinctiveness of marks and the extent of usage, along with the settled legal position that descriptive marks can be registered if they acquire secondary meaning.
Final Decision: The court disposed of the appeal by allowing the Appellant's mark 'DATAPAQ' to be advertised in the trademark journal by the Registrar of Trademark subject to certain conditions, and clarified that the order would not affect opposition proceedings, if any, filed against the mark.
JUDGMENT
Prathiba M. Singh, J. (Oral)--This hearing has been done through hybrid mode.
2. The present appeal has been filed under Section 91(1) of Trade Marks Act, 1999 by the Appellant-Fluke Corporation challenging the impugned order dated 10th December 2018 passed by the Respondent-Registrar of Trademarks.
3. Vide the impugned order, the Appellant's Trademark Application bearing no. 2354325 dated 26th June 2012 for the mark `DATAPAQ' in Class 9 (`the Application') has been rejected under Section 9(1)(b) of the Trade Marks Act, 1999 on the ground that the same is descriptive of the goods and services.
4. On 4th July, 2022, a statement was made on behalf of the Appellant that it is willing to restrict the mark `DATAPAQ' qua certain goods for temperature systems and temperature profiling. Ld. Counsel for the Appellant was directed to place on record an amended description of goods. The same has been placed on record today. The new description of goods read as under:
"computer software for temperature profiling systems in the fields of heavy clay and ceramics, heat treating, electronics manufacturing and the finishing industry: temperature profiling system comprised of electronic data loggers, thermocouples, thermocouple jigs, humidity sensors, telemetry hardware, thermocouple probes, and computer software, together with thermal insulation barriers, for use to analyze, monitor, record, and log data regarding temperatures in the heat treatment industry, product finishing industry, heavy clay and ceramics industry, electronics manufacturing industry, solar cell and photovoltaic module manufacturing industry, and food industry: electronic data logger sensors: thermocouples: thermocouple jigs: humidity sensors: telemetry hardware: thermocouple probes: computer software for analyzing, monitoring, recording, and logging data for use in the heat treatment industry: computer software for analyzing, monitoring, recording, and logging data for use in the product finishing industry: computer software for analyzing, monitoring, recording, and logging data for use in the heavy clay and ceramics industry: computer software for analyzing, monitoring, recording, and logging data for use in the electronics manufacturing industry: computer software for analyzing, monitoring, recording, and logging data for use in the solar cell and photovoltaic module manufacturing industry: computer software for analyzing, monitoring, recording, and logging data for use in the food industry: computer software to monitor and control factory manufacturing processes: and computer software for temperature profiling systems in the heat treatment industry, product finishing industry, heavy clay and ceramics industry, electronics manufacturing industry, solar cell and photovoltaic module manufacturing industry, and food industry: electrical and scientific apparatus"
5. The Appellant has, in effect, deleted the following three descriptions.
6. A perusal of the mark would show that the Appellant is seeking registration of the mark `DATAPAQ' as a word mark. The said mark is, according to the Appellant, being used as temperature monitoring and temperature profiling software systems. The Appellant is also using the mark such as WICKEDPAQ, MONOPAQ, etc. as a series of marks.
7. A perusal of the examination report and the search report dated 24th June 2013 on record would show that there are several other parties, having registrations in respect of the marks consisting of the word `DATA' `PAQ/PACK' as well.
8. Such marks include DATA I/O, PACKIT, DATA WORLD, PACK TRACK, PACKTOP, DATA, PACK1, DATA ROBOTICS, DATA XPLOD, PACK POWER, DATA FLO, PACKWIN, DATA RESOLVE TECHNOLOGIES.
9. Search report filed by the Appellant dated 9th May 2018 also reveals that marks similar to the Appellant's mark `DATAPAQ' exist as words `DATA' and `PACK' or `PAQ'.
10. A perusal of the impugned order would show that the o
The central legal point established in the judgment is that descriptive marks can be registered under the Trade Marks Act, 1999 if they acquire secondary meaning, and the distinctiveness of marks and....
A descriptive trademark can be registered if it is proven to have acquired distinctiveness through secondary meaning, alongside consideration of existing registrations and usage.
For trademarks filed on a proposed-to-be-used basis, evidence of secondary meaning is not required. Trademarks must be analyzed as a whole rather than being dissected into common constituent words, a....
The main legal point established in the judgment is that a mark cannot be dissected into its individual parts while examining its entitlement to registration, and the distinction between lack of dist....
Generic and descriptive terms in trademarks cannot be exclusively claimed, and likelihood of confusion must be assessed holistically from the average consumer's perspective.
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 distinctiveness acquired through extensive use and global presence of a trademark should be considered in the registration process.
Court held that common descriptive terms in trademarks cannot be claimed exclusively and must be assessed as a whole, dismissing claims of deceptive similarity.
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 ....
Distinctiveness of a trade mark must be assessed in its entirety, not by dissecting its components, supporting the Anti-Dissection Rule.
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