Title Sesson 1 - APS - Trademark Prosecution (PPT).pptx ✅

TRADEMARK PROSECUTION March 25, 2025 Aparna Sreedhar Partner, ALG India Law Offices LLP
Section 9 – Absolute Grounds for Refusal Cadila Healthcare Ltd. v. Gujarat Co-operative Milk Marketing Federation Ltd. & Ors. [2008(36)PTC168(DEL)]: The issue before the Court was whether the trademark ‘Sugar Free’ was non-distinctive and descriptive for artificial sweeteners. The Court held that “It is important to be borne in mind that use of a descriptive expression as a trade mark by a trader, irrespective of the said trade mark having acquired a secondary meaning and distinctiveness in relation to the trader's products, does not entitle such trader from precluding other traders from using the said expression for the purposes of describing the characteristic features of their products”.
Section 9 – Absolute Grounds for Refusal The Imperial Tobacco Co. of India Ltd. v. The Registrar of Trade Marks [AIR 1977 Calcutta 413]: The Registrar of Trade Marks had refused a composite device mark consisting of the word ‘SIMLA’ for cigarettes as being non-distinctive as it incorporates a famous geographical location. The Appellant preferred an appeal, and the issue before the Court was whether the mark SIMLA was inherently distinctive or had acquired distinctiveness. The Court held that “the expression "capable of distinguishing" involves both the future potentiality and the present capability of distinguishing in determining whether a mark is “capable of distinguishing” it is not mere future speculation by itself into uncertain future events. There has to be a present judging and assessment whether the mark is “capable of distinguishing”. In doing so the nature of the mark the nature of the goods in respect of which it is used or to be used, the nature of the market in which it is to operate including the geography, the country the consumer and also the future prospects.”
Section 9 – Absolute Grounds for Refusal Hindustan Unilever Limited v. The Registrar of Trademarks [OA/12/2020/TM/MUM]: The issue before the Court was that whether the mark GLOW & LOVELY was correctly refused by the Registrar as being non-distinctive. The Court held that “the mark of the Appellant was a unique combination of two common English words which when taken together results in a composite mark yielding a different and distinctive commercial impression. The Hearing Officer has erred in not taking into consideration the numerous registrations and acceptances granted by the Trademarks Office to the other distinctive combination of marks of the Appellant…. we agree that the mark “GLOW & LOVELY” of the Appellant is inherently distinctive in nature.”