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IN THE HIGH COURT OF DELHI
Prathiba M. Singh, J.
Disruptive Health Solutions Private Limited - Appellant
Versus
Registrar of Trade Marks - Respondent
C.A. (COMM.IPD-TM) 133 of 2022 & I.A. 10334-35 of 2022
Decided On : 08-07-2022
Important Points
Subject
Intellectual Property - Trademark Law
Headnote
(B) Distinctiveness of Marks - Marks can be categorized as arbitrary, fanciful, suggestive, descriptive, or generic - Descriptive marks may be registered if secondary meaning is established. (Paras 7-9)
(C) Spectrum of Distinctiveness - Court confirms existing marks and sales factor into trademark registration - Impugned order overturned, allowing advertisement of the application with caveat on exclusive rights. (Paras 10-14)
Facts of the case:
The Appellant sought registration of 'HEALTHSKOOL' for medical products but was denied due to claims of descriptiveness despite having existing registrations.
Findings of Court:
The Court found the trademark distinctive enough for advertisement, ordering compliance for publication.
Issues: The central issues were descriptiveness of the proposed mark and the applicability of the existing registrations to support distinctiveness.
Ratio Decidendi: The court ruled that the mark 'HEALTHSKOOL' should have been considered for its prior registrations and its existing use since 2015.
Result: Appeal allowed, application to proceed for advertisement.
| Table of Content |
|---|
| 1. trademark application details and context (Para 1 , 3 , 4) |
| 2. arguments regarding trademark descriptiveness (Para 5 , 6) |
| 3. distinctiveness spectrum and legal standards (Para 7 , 8 , 9 , 10 , 11) |
| 4. assessment of the distinctiveness of the mark (Para 12) |
| 5. court's final order and directions (Para 13 , 14 , 15 , 16) |
JUDGMENT
Prathiba M. Singh, J. (Oral)--The present appeal under section 91 of the Trade Marks Act, 1999 (hereinafter `Act') has been filed challenging the impugned order dated 8th December, 2021 passed by the Senior Examiner of Trade Marks. By the impugned order, trade mark application of the Appellant bearing no. 3942420 in Class 10 for the mark `HEALTHSKOOL' has been rejected by the Respondent under Section 9(1)(b) of the Act on the ground that the mark is descriptive. The case of the Appellant is that the mark `HEALTHSKOOL' in respect of products falling in Class 10 being bandages, condoms, surgical, medical, dental and veterinary apparatus and instruments, artificial limbs, eyes and teeth, orthopaedic articles suture materials etc is not descriptive in any manner. Ld. Counsel for the Appellant submits that the Appellant already had other registrations for the mark `HEALTHSKOOL' under various classes. Moreover, the rejection of the application of the Appellant is under Section 9(1)(b) of the Act and no similar mark has been cited in the examination report.
2. A copy of the paperbook was served upon Mr. Harish V Shankar, Ld. CGSC in the morning. Ld CGSC was asked to confirm if the Appellant had other registrations for the same mark. Post-lunch it is confirmed by Mr. Harish V. Shankar that the Appellant has been granted registrations for the mark HEALTHSKOOL in other classes.
3. Heard. A perusal of the subject trademark application of the Appellant shows that the Appellant has applied for the wordmark `HEALTHSKOOL' on `proposed to be used' basis in respect of products falling in Class 10. The mark `HEALTHSKOOL' has been adopted by the Appellant in 2015 in respect of various medicinal and other products and e-pharmacies. The details of the registrations of the Appellant for the mark `HEALTHSKOOL' under various classes is as follows:
| Registration No. | Mark | Class | Status |
| 3942422 | HEALTHSKOOL | 44 | Registered |
| 3942423 |  | 44 | Registered |
| 3942421 | HEALTHSKOOL | 3 | Registered |
| 3942419 | HEALTHSKOOL | 5 | Registered |
4. The Appellant also uses the domain name www.healthskoolpharmacy.com which was registered by it in May, 2021. The Appellant has prominently displayed the mark `HEALTHSKOOL' on its website. The Appellant has, further, widely publicised the mark through promotional features and advertisement in various publications including newspapers. The case of the Appellant is that it intends to now expand to products falling in Class 10 i.e., for bandages, condoms and other cognate and allied products in the surgical medical field and had, therefore filed the subject application.
5. A perusal of the examination report in respect of the mark `HEALTHSKOOL' shows that no identical or deceptively similar marks have been cited by the Registrar in the examination report dated 10th October, 2018 and the only objection raised by the Registrar in respect of the mark was under Section 9(1)(b) Act. In the impugned order, the reasons given for rejection are extracted below:
" Advocate Abhilasha appeared Attorney appeared before me and made his/her submissions. I have heard arguments and gone through the records.
Advocate Abhilasha appeared. The mark has been refused in the light of section 9(1)(b) which is "The Trade Mark consist exclusively of marks or indications which serve in trade to designate the 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 services."
For a trademark to be descriptive, it is sufficient that it is reasonably indicative and descriptive to the kind and nature of services applied. To be descriptive, it is sufficient if inform
