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Analyzing Distinctiveness in Trademarks

The legal landscape surrounding trademark registration often involves nuanced considerations of distinctiveness. This article delves into a recent case where an appeal was filed against the rejection of a trademark application for "BHARAT with device of Brush" in relation to painting brushes, artistic brushes, and roller brushes. The Registrar of Trademarks had rejected the application on the grounds of the mark being highly descriptive and indicative of the intended purpose of the specified goods. The High Court of Delhi, in its decision, examined the distinction between a trademark inherently lacking in distinctiveness and a trademark lacking in distinctiveness.

Background of the Case:
The appellant's trademark application was rejected by the Registrar on the basis that the mark, comprising the word "BHARAT" with a distinctive brush device, was highly descriptive and may serve to designate the quality of the applied specification. The Registrar contended that the inclusion of a brush in the trademark indicated the intended purpose of the specified goods, making it non-registrable.

Inherently Lacking in Distinctiveness:
The Hon'ble High Court of Delhi noted that there are marks that are inherently lacking in distinctiveness, rendering them incapable of distinguishing the goods or services to which they relate. This category may include commonly used words that inherently lack distinctive character, such as "and," "the," or "it." These marks are incapable of functioning as source identifiers from the outset.

Lacking in Distinctiveness:
In contrast, the court identified another category of marks that are "lacking in distinctiveness." These marks are commonly found or used in connection with goods or services, making them incapable of serving as source identifiers. For a mark to fall into this category, there must be specific reference in the Registrar's order identifying the mark as being "common to the trade."

Analysis of BHARAT with Device of Brush:
The High Court analyzed the trademark "BHARAT with device of Brush" as a whole, emphasizing that it is a device trademark and must be considered in its entirety. The court rejected the notion that the mark was descriptive merely because it included a paint brush. The distinctive style of the word "BHARAT," combined with the unique elements of the brush device, was deemed to be distinctive and not lacking in distinctiveness.

Conclusion and Remand:
Concluding that the trademark, seen as a whole, was clearly distinctive, the court set aside the impugned order of the Registrar. The matter was remanded to the Senior Examiner of Trademarks for further examination, recognizing the distinctive character of the mark and its potential eligibility for registration.

In essence, this case underscores the importance of considering trademarks as integral wholes, particularly when they involve distinctive elements that contribute to their overall distinctiveness. The analysis also highlights the critical distinction between marks that are inherently lacking in distinctiveness and those lacking distinctiveness due to common usage in the trade.

The Case Law Discussed:
Case Title: Muneer Ahmed Vs Registrar of Trademarks
Date of Judgement/Order:17/11/2023
Case No. C.A.(COMM.IPD-TM) 20/2023
Neutral Citation No:2023:DHC:8404
Name of Hon'ble Court: Delhi High Court
Name of Hon'ble Judge: C Hari Shankar, HJ

Information and discussion contained herein is being shared in the public Interest. The same should not be treated as substitute for expert advice as it is subject to my subjectivity and may contain human errors in perception, interpretation and presentation of the fact and issue involved herein.

Written By: Advocate Ajay Amitabh Suman, IP Adjutor - Patent and Trademark Attorney
Email: [email protected], Ph no: 9990389539

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