The standards in case of a "word mark" often come under contention, specifically in cases where words may assume multiple and diverse meanings. The word being laudatory or not, is often another ground that is vouched. The case of ITC Limited v. GTC Industries Ltd. & Ors. 2008 (37) PTC 321 reiterates and reinstates these very aspects.
Opposing the order passed by the Deputy Registrar of Trademarks, dealing with an opposition filed to GTC's application for a trademark, ITC Ltd. approached the Intellectual Property Appellate Board (IPAB). The matter lay forth the IPAB in pursuance to the High Court transferring the matter to the present forum.
GTC's application dealt with the mark "VENTURE" in respect to cigarettes, tobacco, safety matches, smoker's articles etc. as under Class 34 of the Schedule appended to the Trade Marks Act, 1958. The mark was opposed to by ITC on the ground that the mark did not qualify as inherently distinctive nor was it capable of distinguishing the goods in which GTC was dealing, but in fact may be connected in the course of trade falling under the purview of S.9 of the 1958 Act. The opposition filed by ITC was dismissed and GTC was allowed to proceed to registration.
ITC vouched before the Board of its highly recognized and reputed stand in the Tobacco sector. They also averred that the Deputy Registrar in disallowing the opposition had erred in law and facts. They stated that the mark could not be considered as adapted to distinguish and lacked inherent distinctiveness. The onus of showing such distinctiveness lay on GTC and that the Deputy Registrar had failed to acknowledge this. They also averred that GTC had failed to prove extensive use of the mark and that their mark solely associated with their mark. ITC contended that the mark was a common word in the English language is not distinctive and does not possess a secondary meaning. They also stated that such words were often used as laudatory and hence cannot be used as a trademark. They cited a plethora of cases and instances, while looking at various dictionary meanings and stated that GTC had failed to appreciate these. Amongst these, they also referred to an earlier suit between the two, ITC Ltd. v. G.T.C. Industries Ltd. & Anr. 2002(25) PTC 341 (Bom)
To these, GTC rebutted stating that the appeal was inadmissible since the appeal had been filed under S. 108 of the Act, while the same should have been filed as under S. 91(1) and 91(2) of the 1999 Act. They also defended themselves stating that the Registrar had decided the matter as under the well-settled principles of law and that the mark was not in contravention of the provisions of Section 9 of the Trade Marks Act, 1958. They also stated that the word "VENTURE" was not laudatory in as much as it is not an adjective, and is used as a noun or a verb. With respect to the earlier decision that was cited by ITC, they stated the same to be inapplicable.
The Board stated that the main issue that required consideration was whether the Deputy Registrar had rightfully allowed registration of the mark. The etymology and dictionary meanings were taken into consideration. The court opined that keeping in mind the nature of the goods, the word was descriptive of the products, in as much as one of the meanings appended to it was "to take a risk". They also opined that the word venture being used in terms of business and commercial interest should not be granted monopoly on. As regards the applicability of S. 91 of the Trade Marks Act, 1999, it was stated that the Act having come to force much after the appeal had been filed, became inapplicable to the case. The Board allowed the appeal in favour of ITC and set aside the order of the Deputy Registrar.
The content of this article is intended to provide a general guide to the subject matter. Specialist advice should be sought about your specific circumstances.
