Date: 8th July, 2022
Case No: C.A. (COMM.IPD-TM) 133/2022 & I.A. 10334-35/2022
Coram: HON’BLE JUSTICE PRATHIBA M. SINGH, DELHI HIGH COURT
Appellant: DISRUPTIVE HEALTH SOLUTIONS PRIVATE LIMITED
Respondent: REGISTRAR OF TRADE MARKS
Mark: HEALTHSKOOL
Decision: Appeal allowed. Application directed to be advertised
The Appellants filed the said appeal under the provisions of Section 91 of the Trade Marks Act, 1999 (“Act”) against the Impugned Order dated 8th December, 2021 passed by a Senior Examiner of the Respondent authority (“Impugned Order”). The Learned Senior Examiner of the Respondent had refused registration to the mark ‘HEALTHSKOOL’ bearing Application No. 3942420 in Class 10 under the provisions of Section 9(1)(b) of the Act stating that the said mark is descriptive.
The goods applied for under the said application were ‘Bandages; condoms; surgical, medical, dental and veterinary apparatus and instruments; artificial limbs, eyes and teeth; orthopaedic articles; suture materials; therapeutic and assistive devices adapted for the disabled; massage apparatus; apparatus, devices and articles for nursing infants; sexual activity apparatus, devices and articles.’ The said application was filed on 11th September, 2018 on a ‘proposed to be used’ basis.
While the trade mark application in question was refused registration, the Appellant stated that it had obtained registrations for the mark ‘HEALTHSKOOL’ in other classes. The Appellant’s counsel further stated that the Appellant owns and uses the domain name www.healthskoolpharmacy.com since May, 2021.
The brief findings from the Impugned Order on the basis of which the subject mark was refused are as follows:
- The mark has been refused in the light of Section 9(1)(b)…
- For a trademark to be descriptive, it is sufficient that it is reasonably indicative and descriptive to the kind and nature of services applied, and the information connoting is afforded to the general nature or character of the services.
- An exclusive trademark must consist of some arbitrary or fanciful term, figure, device, phrase, to constitute a trademark…
- Therefore, the use of the expression HEALTHSKOOL…would only indicate the purpose or the use for which the goods are meant.
- The mark has been applied on ‘proposed to be used’ basis so there is no question of acquired distinctiveness.
The Hon’ble Court found that: the Learned Senior Examiner erred in law while applying the standard required for registration of marks. It referred to the various decisions which discuss the spectrum of distinctiveness such as the case in Bata India Limited v. Chawla Boot House (2019) 259 DLT 292 wherein it was held that:-
‘…the question as to whether the mark is descriptive or suggestive, can be based on the following tests:
- a) Degree of imagination required to connect the mark with the product; and
- b) The competitor’s need to use the mark.’
A reference was also made to the ‘test of distinctiveness’ made in People Interactive (India) Private Limited v. Vivek Pahwa 2016 (68) PTC 225 (Bom), passed by the Learned Single Judge of the Bombay High Court. An excerpt from the said judgement is:
‘An expression in the second category (generic or commonly descriptive), a merely descriptive term, is often used to describe some particular characteristic or ingredient: ‘airtight’, perhaps. Ordinarily, even these are not registrable unless they have acquired a secondary meaning and refer exclusively to one particular trader’s goods. In the third category we have suggestive words. These only hint at a feature or a specialty.’
The Hon’ble Court in the present matter also stated that trade marks can be of various categories, namely:
- Arbitrary, fanciful and invented marks;
- Suggestive Marks;
- Descriptive Marks,
- Generic Marks.
The Hon’ble Court went on to observe that simply because a section of the mark contains a reference or indication of the items or services intended for, it is not automatically rejected. The mark would be examined taking into consideration the extent of usage. Also, the fact that the Appellant had registrations in other classes, the owner always has a right to expand its business into other goods and services, and the same will have a bearing on the capability of the registration of a mark.
The Hon’ble Court noted that the Appellant had been using the mark ‘HEALTHSKOOL’ since 2015, had obtained registrations in various classes for the word mark and label mark and that the sales of the Appellants 2020-21 were Rs. 23 crores (approx.).
The Appellant’s counsel submitted that the Appellant does not claim any rights over the word ‘health’ per se.
The Hon’ble Court set aside the Impugned Order, and directed the Respondent to advertise the mark within the next two months, with the condition that ‘No exclusive rights in the word ‘Health’.
