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IN THE HIGH COURT OF DELHI
Prathiba M. Singh, J.
Modicare Limited - Appellant
Versus
Registrar of Trademarks - Respondent
C.A.(COMM.IPD-TM) 9 of 2022 & I.A. 745 of 2022 with C.A.(COMM.IPD-TM) 11 of 2022 & I.A. 969 of 2022 with C.A.(COMM.IPD-TM) 4 of 2022
Decided On : 19-04-2022
Important Points
Subject
Intellectual Property - Trademark Law
Headnote
(B) Trademark distinctiveness and branding - The Court acknowledged the distinct usage of the house mark `MODICARE' by the Appellant in conjunction with the mark `ACHIEVERS ACADEMY', which strengthened its registration claim. (Paras 9, 10)
Facts of the case:
The Appellant applied for the registration of the trademark `ACHIEVERS ACADEMY' across various classes but faced refusals based on earlier registrations. The Appellant contended that the cited marks were not in use and argued for the reputation of their mark.
Findings of Court:
The Court directed that the applications for `ACHIEVERS ACADEMY' proceed for advertisement with conditions regarding the use of the house mark `MODICARE'.
Issues: The principal issues included the validity of cited identical registrations and the distinctiveness of the Appellant's mark.
Ratio Decidendi: The Court determined that adding the house mark `MODICARE' would aid in distinguishing the Appellant's trademark and allowed the applications to proceed, emphasizing the recognition and distinctiveness acquired by the mark over time.
Result: Appeals disposed of with directions.
| Table of Content |
|---|
| 1. trademark applications details and background (Para 2 , 3 , 4 , 5) |
| 2. arguments regarding trademark registration (Para 6 , 7) |
| 3. court's observations on trademark issues (Para 8 , 9) |
| 4. conditions for proceeding with trademark applications (Para 10) |
| 5. conclusion and disposal of appeals (Para 11 , 12) |
JUDGMENT
Prathiba M. Singh, J. (Oral)
1. This hearing has been done through hybrid mode.
2. These are three appeals challenging the impugned orders by which the office of Registrar of Trademarks has refused the applications of the Appellant for the registration of following trademarks:
| S. No. | Trade mark Appn. No. & Date | Class & Services | Date of impugned order | Mark |
| 1. | 3306596 & 11th July, 2016 | Class: 41 Education, Providing of Training, Entertainment, Educational training and instructional services, conducting training programmes, seminars, conference, workshops, conventions, assemblies, editing, fashion shows for entertainment purposes, forming an organization and clubs included in class-41 | 1st March 2021 | ACHIEVERS ACADEMY |
| 2. | 3306595 & 11th July, 2016 | Class:35 Advertising, Business management, Marketing of products Business administration marketing of products using and with aid of brochures, handbooks manuals, Stationary items and training materials included in class-35 | 26th February 2021 | ACHIEVERS ACADEMY |
| 3. | 3306593 & 11th July, 2016 | Class:41 Education, providing of training, entertainment, educational training and instructional services, conducting training programmes seminars, conferences, workshops, conventions, assemblies, editing, Fashion shows for entertainment purposes, forming an organization and clubs included in class-41 | 1st March, 2021 |  |
3. The Appellant-M/s Modicare Limited is involved in direct selling business in India since 1996 and has more than 50 lakhs active consultants catering to over 2700 cities across the world. For the said direct selling business, it adopted the following device mark in the year 2015:
4. The mark `ACHIEVERS ACADEMY' was coined in respect of events/programs done for honouring its high achieving consultants in order to boost their confidence. The said step was taken as a human resource measure to recongnise the achivements of the consultants in fulfilling various targets.
5. The said mark, after adoption, has been applied for registration under various classes. The trademark `ACHIEVERS ACADEMY' is registered in class 35 as a device mark bearing trade mark number 3306592 and in class 45, both as word mark and device mark bearing trade mark numbers 3306597 and 3306594 respectively. In the present three appeals, the mark `ACHIEVERS ACADEMY' has been rejected by the Registrar of Trademarks on the basis of several marks which have been cited in the examination report, which have the word `ACHIEVERS ACADEMY'.
6. Ms. Rajeshwari, ld. counsel, appearing for the Appellants submits that most of the cited marks are not in use. Furthermore, the Appellant has been using the mark `ACHIEVERS ACADEMY' with the house mark of the Appellant being `MODICARE'. She also submits that the mark `ACHIEVERS ACADEMY' has been used extensively by the Appellant since the year 2015 and has also acquired distinctiveness. She submits that the rejection of the mark `ACHIEVERS ACADEMY' would cause grave injustice to the Appellant which has invested in the mark.
7. Mr. Harish, ld. CGSC appearing for the Respondent submits that there are identical applicants/registrants of the mark `ACHIEVERS ACADEMY' as is evident from the examination reports. The details of the cited marks is as under:
| application number | Mark | Class | Status |
| 1309027 |  | 41 | Registered |
| 1357942 | Achievers Academy | 41 | Examination Report issued |
| 2296486 |  | 41 | Objected |
| 2671855 |  | 41 | Objected |
| 1201081 | Achievers International | 16 | Registered |
| 2053188 |  | 16 | Opposed |
| 2458618 |  | 16 | Objected |
| 2522460 | Achievers | 16 | Objected |
| 2690388 |  | 16 | Objected |
| 3210320 | Achievers Point | 16 | Objected |
| 2256639 |  | 35 | Registered |
| 1271322 | Achievers (Label) | 41 | Registered |
| 2432932 |  | 41 | Objected |
8. A perusal of the cited marks shows that there are various identical a
