Introduction:

The case of British Engines (UK) Limited v. The Assistant Registrar of Trade Marks revolves around the appellant, British Engines (UK) Limited, a UK-based company, seeking the registration of the trademark bearing application number 2769368 in India. The case centers on the rejection of their trademark application by the Assistant Registrar of Trade Marks in Chennai under Sections 9 and 11 of the Trade Marks Act, 1999.

Procedural History:

The appellant filed an application for the registration of a trademark on 07.07.2014 in classes 6, 7, 41, and 42. Subsequently, objections were raised under Sections 9 and 11 of the Trade Marks Act, 1999, on 17.11.2015. The appellant responded to the examination report on 21.04.2016. However, despite their response, the application was rejected on 20.07.2018, citing Sections 9 and 11 as grounds for rejection. The grounds of decision were provided to the appellant on 05.10.2018, leading to the initiation of this appeal. The relevant extract of the order is produced herein below:

Issues Presented:

1. Whether the trademark applied for by British Engines (UK) Limited is objectionable under Section 9/11 of the Trade Marks Act?
2. Whether the rejection of the trademark application by the Assistant Registrar of Trade Marks was justified?

Rule of Law:

The primary legal framework relevant to this case is the Trade Marks Act, 1999. Specifically, the case invokes Sections 9(1)(a) and 9(1)(b) of the Act, which pertains to absolute grounds for refusal of registration. Section 9(1)(a) deals with trademarks devoid of distinctive character, while Section 9(1)(b) pertains to trademarks consisting exclusively of marks or indications that serve to designate various characteristics of the goods or services.

Contentions of the Appellant:

The appellant, British Engines (UK) Limited, contended that their trademark is a device mark that originates from their corporate name. They argued that the mark does not apply to engines and, therefore, cannot be characterized as descriptive of the goods or their characteristics. Additionally, they highlighted registrations obtained for the same mark in multiple jurisdictions outside India.

Contentions of the Respondent:

The Assistant Registrar of Trade Marks, the respondent, argued that the trademark in question consists of two descriptive words, “BRITISH” and “ENGINES,” with the former indicating geographical origin and the latter indicating the nature of goods. The respondent also pointed out that multiple conflicting marks were cited in the examination report, justifying the rejection of the application.

Analysis and Reasoning:

The impugned order rejecting the trademark application was found to be unsustainable due to its lack of detailed reasoning. While the order stated that the mark was highly descriptive and indicated the intended purpose of the goods and services, it did not adequately address the explanations provided by the appellant in response to the objections under Sections 9 and 11.

The appellant’s argument that the mark is not applied to engines and that it is derived from their corporate name was considered. Moreover, the fact that the appellant obtained registrations for the same mark in multiple overseas jurisdictions added weight to their claim that the mark had distinctiveness.

Holding and Decision:

The Court held that the impugned order, which lacked detailed reasons, was unsustainable. The case was allowed without any order as to costs, and the impugned order was set aside. Consequently, the application was permitted to proceed to advertisement, subject to the limitation that the appellant could not claim exclusive rights to use the words “British” or “Engines” separately. This limitation was imposed to ensure that the mark did not hinder others from using these common words in their own trademarks.

Implications and Significance:

This case highlights the importance of providing clear and reasoned decisions in trademark registration matters. It also underscores the need to consider the specific circumstances and evidence presented by the applicant before rejecting a trademark application. Furthermore, it establishes that trademarks can be allowed to proceed to registration even if they contain descriptive elements, provided they meet certain criteria and do not unduly restrict the use of common terms.

Conclusion:

The case of British Engines (UK) Limited v. The Assistant Registrar of Trade Marks serves as a reminder of the importance of clear and reasoned decisions in trademark registration matters. It also demonstrates that trademarks with descriptive elements may still be registered if they meet certain criteria. This decision is significant in ensuring a fair and balanced approach to trademark registration in India.

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• Source: https://www.theippress.com/2023/11/15/british-engines-uk-limited-v-the-assistant-registrar-of-trade-marks/