IMPORTANT POINT
The distinction between descriptive and suggestive marks and the justifiability of refusal of registration under Section 9(1)(a) and Section 9(1)(b) of the Trade Marks Act.

ORDER (Oral)

1. The appellant applied on 28 January 2013 for registration of the word mark "WONDERFUL WORLD" in Class 39 in respect of "transport; packaging and storage of goods; travel arrangements, tourism, arranging for travel tours".

2. The application was rejected by the Senior Examiner of Trade marks vide order 1 May 2018, which reads thus:

"ORDER

A Hearing in respect of the above matter came up before me on 23/04/2018 and the following is to be communicated to the applicant/agent:

1. Shri Mr. Shreyas Rastogi applicant/Advocate/Agent appeared before me and made his submissions. I have heard arguments, gone through the records and passed the following Order.

2. The trade mark applied for is objectionable under Section 9/11 of the Act. The application is accordingly refused.

Attention is invited under Rule 36(1) of the Trade Marks Rules,2017 whore the application is refused a request may be made in form no TM-M along with the prescribed fee to communicate in writing the grounds of decision and materials used by the Registrar in arriving at his decision to refuse the said application. The said request on form TM-M should be tendered within 30 days of receipt of the order of refusal.

Dated: 01 May 2018

(BIRENDRA JAISWAL)

SENIOR EXAMINER OF TRADE MARKS

(Authorized under 3(2) of the Act)"

3. As advised in the concluding paragraph of the aforesaid order dated 1 May 2018, the appellant applied on 4 June 2018, seeking the reasons for rejecting the appellant's application.

4. I may note that the practice of passing an unreasoned order rejecting an application for registration of a trademark and, thereafter, requiring the applicant to apply for obtaining the reasons for rejection against payment of a fee is a clearly an unwholesome practice though it has legislative sanction in the form of Rule 36(1)^[36. Decision of Registrar. - (1) The decision of the Registrar under Rules 33, 34 or 41 shall be communicated to the applicant in writing at his address of service and if the applicant intends to appeal from such decision, he may within thirty days from the date of such communication apply in Form TM-M to the Registrar requiring him to state in writing the grounds of, and the materials used by him in arriving at, his decision.^] of the Trade Marks Rules. Mr. Mishra informs me that the said practice is no longer being followed. This is undoubtedly a welcome development.

5. That apart, this Court has been seeing, in case after case, during the regime when Rule 36(1) was being followed in text and spirit, that the subsequent order, which was supposed to contain the reasons for rejection of the applicant's application for registration of a trademark, was as unreasoned as the original order of rejection, as it merely set out the text of the relevant provisions. Instead of taking the trouble of typing out the text of the provisions, the rejecting authority might just as well have directed the applicant to study the provisions of the Trade Marks Act and discern for himself as to why his application was rejected. Mere reproduction of the text of the provisions, in response to a request by the applicant under Rule 36(1) seeking reasons for rejection, does complete disservice to the requirement of providing reasons.

6. Be that as it may, as this practice is no longer being followed, I refrain from making any further comments on it.

7. I do not see any purpose in remanding this matter to the respondent to give detailed reasons for rejection, as the impugned order was passed in 2018, and five years have passed since then, during which COVID-19 pandemic has come and, hopefully, gone.

8. I, therefore, queried of Mr. Mishra, who appears on behalf of the Registrar of Trademarks as to the justification for invoking Sections 9(1)(a)^[9. Absolute grounds for refusal of registration.-(1) The trademarks-(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 b