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Delhi High Court’s quashing of refusal order in trademark case a fine critique on unskilled action

20 July 2023

Delhi High Court’s quashing of refusal order in trademark case a fine critique on unskilled action

Aditi Verma Thakur, Senior Partner, Ediplis Counsels, Bengaluru

According to Aditi Verma Thakur, senior partner at Ediplis Counsels in Bengaluru, the Delhi High Court’s quashing of the Registrar of Trademarks’ refusal order in Abu Dhabi Global Market v. Registrar of Trademarks was a “fine critique on an unskilled action of the Authority.”

“The Court’s judgment suitably disposing of the subject matter is a fine critique on an unskilled action of the Authority,” she said. “It was a well-reasoned and welcome judgement to correct the errors made by the Assistant Registrar or the ‘Authority.’”

Abu Dhabi Global Market (ADGM), an international financial centre and free zone in Abu Dhabi, United Arab Emirates (UAE), applied to register the composite mark, among other things, containing the words “Abu Dhabi Global Market” along with their registered logo. ADGM was permitted to use the name Abu Dhabi Global Market for free financial zones by a federal decree of the UAE.

In its refusal order on December 9, 2022, the Registrar of Trademarks reasoned that the mark had not acquired any distinctiveness by way of actual use. It is neither invented nor coined and contains a geographical name, Abu Dhabi, and that the composite mark containing a geographical name means it lacks distinctiveness.

Finding the composite mark to be distinctive, the court overturned the refusal order on May 18, 2023. Among others, a mark could be registered if it is distinctive to its proprietor.

“There was no reasoning provided by the Authority to show why the subject composite mark was not distinctive to its proprietor,” said Thakur.

In its judgment, the court said a trademark must be distinctive but does not have to be coined or invented for it to be registered. It also stated that the composite mark does not exclusively contain the geographical name Abu Dhabi. The prohibition under Section 9(1)(b) of the Trade Marks Act, 1999, requires a mark to exclusively contain a geographical name for it to be refused registration.

According to Thakur, the court, in its judgement, made special mention of its unhappiness at how the Authority discharged its duties.

“The court also noted that the applicant had filed their reply to the examination report containing detailed submissions as well as extensive documentation that ran into 100 plus pages, and said documentation had been ignored by the Authority. The court also observed the lack of the application of mind by the Authority in writing and passing the refusal order,” she shared.

“This judgment, along with the other critical judgements like this, would gradually push the officers of the Trade Marks Registry to follow the law and procedural rules more carefully in the future,” added Thakur.

- Espie Angelica A. de Leon

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