IMPORTANT POINT
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.

ORDER

C.A.(COMM.IPD-TM) 20/2023

1. The order dated 12 May 2023, passed by the Senior Examiner of Trademarks and impugned in the present appeal under Section 91 of the Trade Marks Act, 1999, rejects Application No. 4136359, filed by the appellant seeking registration of the device mark in Class 16 for "Painting Brushes, Artistic Brushes, Roller Brushes".

2. The paragraphs from the impugned order which set out the grounds for rejecting the appellant's application, read as under:

"Following objections were raised:

Section 9 (1) (a): The mark applied for registration is objectionable under Section 9(1)(a) of the Trade Marks Act 1999, as it is 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.

Section 9(1) (b) - 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, quality, quantity, intended purpose, values, geographical origin or the time of production of the goods or rendering of the service or other characteristics of the goods or service.

The reply to examination report and materials available on record till the date of hearing were considered.

The applied trademark "BHARAT with the device of brush" is devoid of any distinctive character. The applied trademark is a combination of very common words and cannot be monopolized by individual. The applied trademark is non-distinctive trademark. After considering the reply to examination report, material available on record it was observed that the subject mark is not distinctive and also any valid grounds and reasons based on which objection raised under section 9(1)(a) of the The Trade Marks Act,1999 is not maintainable to the present case.

Also the applied trademark "BHARAT with the device of brush" for the applied specification "Painting Brushes, Artistic brushes, roller brushes" is highly descriptive in nature and may serve in trade to designate quality of the applied specification. The device of brush used in the applied trademark indicate the intended purpose of the specification, as applied mark is for the brushes only. The applied trademark for the applied specification, per se not registrable.

User claimed: The application has been filed on 03/04/2019 and applicant has claimed the user since 27/01/1977. The available evidence in support of application for registration is not sufficient to prove the acquired distinctiveness of the trademark.

The objections raised in the Examination Report under section 9(1) (a) and (b) of the Trade Marks Act, 1999 cannot be waived. After perusal of records and submissions by the attorney in this regard, the registration of the mark is objectionable under section 9(1) (a) and (b) of the trademarks act, 1999"

3. I have heard Mr. Lall, learned Senior Counsel for the appellant and Mr. Vaidyanathan, learned Counsel for the respondent.

4. Mr. Lall submits, inter alia, that there are several registrations granted to the word BHARAT and that, therefore, it cannot be contended that the word BHARAT is publici juris or devoid of any distinctive character and, therefore, ineligible for registration under Section 9(1)(a)[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;
(b) which consist exclusively of marks or indications which may serve in trade to designate the kind, quality, quantity, intended purpose, values, geographical origin or the time of production of the goods or rendering of the service or other characteristics of the goods or service;
(c) which consist exclusively of marks or indications which have become customary in the current language or in the bona fide and established practices of the trade,
shall not be registered:] or 9(1)(b) of the Trade Marks Act for lacking i