A trademark may acquire distinctiveness through extensive use, enabling registration even if it includes common terms, preventing undue blocking of competition.

JUDGMENT

Prathiba M. Singh, J. (Oral)

1. This hearing has been done through hybrid mode.

2. The present appeal under section 91(1) of the Trade Marks Act, 1999 (hereinafter "Act") has been filed by the Appellant challenging the impugned order dated 26th February, 2021 passed by the Registrar of Trademarks rejecting the Appellant's application for the registration of trademark `SALON PROFESSIONAL' in Class 3. Objection has been raised by the Registry under sections 9(1)(b) of the Act on the ground that the mark consists of words which may serve in trade to designate the kind, quality, intended purpose and other characteristics of the goods. The application has further been objected to under section 11(1)(b) of the Act on the ground of similarity of mark and goods covered, in relation to an earlier trademark.

3. The Appellant is one of India's leading direct selling companies offering 350 plus products under 14 different products categories. The Appellant claims to be pioneer of direct selling business in India since 1996. It is stated to have pan India presence with over 55 Modicare Centres and more than 12,000 distribution points catering to 2700 cities.

4. The case of the Appellant is that it adopted the mark `SALON PROFESSIONAL' in 2003 along with its flagship house mark `MODICARE'. It is stated to have spent a huge amount on advertising its products bearing the mark `SALON PROFESSIONAL'. The trademark `MODICARE SALON PROFESSIONAL' is already registered in the name of the Appellant, bearing number 3308621 dating back to 13th July, 2016 for various products in Class 3. Along with the said mark, the Appellant also simultaneously applied for the registration of the mark `SALON PROFESSIONAL' without the `MODICARE' mark for products in Class 3, namely, Hair Care, Hair Cream, Shampoo, Hair Color, Hair Conditioner, Hair Oil, Hair Lotion and other Hair products included Class 3.

5. The said trademark was examined on 17th November, 2016 by the Examiner and objections under Section 9(1)(b) as also Section 11(1)(b) of the Act were raised. In reply, it was the case of the Appellant that the mark `SALON PROFESSIONAL' is a combination of two unique words `SALON' and `PROFESSIONAL', thus, as a whole it creates a totally distinct mark which is exclusively associated with the Appellant. It was further stated in the reply that since said mark has been openly, extensively, and continuously used by the Appellant from 2003, the Appellant is entitled to registration of the said mark.

6. It is submitted by Ms. Rajeshwari, ld. Counsel, that insofar as the objection under section 11(1)(b) is concerned, the cited mark / `SALON PROFESSIONAL YOU LOOK BE SMOOTH GREAT' is a combination device mark which is not in any way similar to the Appellant's mark. The Appellant claims to have adopted the mark `SALON PROFESSIONAL' in 2003 specifically for products falling in Class 3. The mark has been in continues use since 2003 and, thus, it is the case of the Appellant that it has acquired a secondary meaning.

7. Heard the ld. Counsels for both the parties. A perusal of the manner in which the Appellant is using the mark `SALON PROFESSIONAL' would show that the said mark has been used in a logo form. Since the mark which is in use by the Appellant is a device mark in a logo form, grant of a word mark, especially, considering the nature of the mark sought to be registered, could result in blocking other businesses from using the words `SALON' and `PROFESSIONAL', constituting the mark.

8. Ms. Rajeshwari, ld. counsel, however, submits that the Appellant is willing to modify the word mark to a device mark. Accordingly