The main legal point established in the judgment is that a mark cannot be dissected into its individual parts while examining its entitlement to registration, and the distinction between lack of distinctiveness and descriptiveness is crucial in determining the registrability of a mark.

JUDGMENT (Oral)

1. This appeal, under Section 91 of the Trade Marks Act, 1999, assails order dated 26th October 2020 passed by the Senior Examiner in the office of the Registrar of Trade Marks, whereby Application No. 2847019, filed by the appellant for registration of the word mark `COOLPOLY', in (i) Class 1 in respect of plastic and carbon moulding materials for use in the manufacture of moulded plastic articles and (ii) Class 9 in respect of moulded heat sinks for use in computers and parts and components thereof and moulded electrical conductors, was rejected.

2. Application No. 2847019 was filed by the appellant on 19th November 2014. Consequent to a preliminary scrutiny, First Examination Report (FER) dated 13th January 2016 was issued by the Registrar, objecting to the registration of the aforesaid mark COOLPOLY under Sections 9(1)(a)¹[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;
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shall not be registered.
Provided that a trade mark shall not be refused registration if before the date of application for registration it has acquired a distinctive character as a result of the use made of it or is a well-known trade mark.] and 11(1) (though not expressly quoted) of the Trade Marks Act. The objections in the FER read thus:

"1. The trade marks 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;

2. The Trade Mark application is open to objection on relative grounds of refusal under Section 11 of the Act because the same/similar trade mark(s) is/are already on record of the register for the same or similar goods/services. The detail of same/similar trade marks is enclosed herewith.

Save as provided in Sec. 12, a trade mark shall not be registered if, because of-its identity with an earlier trade mark and similarity of goods or services covered by; the trade mark; or its similarity to an earlier trade mark and the identity or similarity of the goods or services covered by the trade mark,.

3. Additionally, the FER required the appellant to file the duly stamped TM-48 which, Ms. Aamna Hasan submits, was filed.

4. Of the aforesaid two objections raised in the FER, the impugned order has dropped the objections predicated on Sections 11 and 12. The Senior Examiner proceeds, thereafter, to reject the appellant's application on the ground that

(i) COOLPOLY was merely a combination of the two English words COOL and POLY,

(ii) COOLPOLY, as a whole, was not inherently distinctive,

(iii) the mark was, on the other hand, descriptive of the goods in respect of which its registration was sought, and

(iv) as registration was sought on a `proposed to be used' basis, it had not acquired any secondary meaning.

(It is not clear from the impugned order, which is extremely clumsily written and worded, whether the Senior Examiner finds COOLPOLY as a whole to be descriptive or whether she finds COOL and POLY individually to be descriptive.)

5. The following passage from the impugned order contains what may be called the reasoning of the Senior Examiner:

"Advocate Aamna Hasan appeared and argued and submitted that. Goods have no reference to mark, and the mark is registered in various jurisdictions so consider as a distinctive. Thirdly sec. 11 is not applicable, heard, and checked the details of application, it appears that, total five opportunities of hearing given. As per details on record and submission made by advocate it appears that, the cited marks are visually, phonetically, and conceptually different, so obj. u/s 11 waived, moreover obj. u/s 9 is sustain because mark as a whole is not inherently distinctive, it is a mere combination of an English word "coolpoly" which is not distinctive and descriptive to applied goods of "[CLASS-1] Plastic and carbon mo