In a significant ruling, the Bombay High Court has set aside the Trade Marks Registry’s refusal Order to register the device mark consisting of Prakriti Paint with cow head device logo under Class 2. The Court held that the Registrar of Trade Marks erred in applying Section 9(1)(b) of the Trade Marks Act, 1999, which deals with descriptive marks, without considering the device mark as a whole.

Background of the Case

1. Khadi and Village Industries Commission (KVIC), a statutory body under the Ministry of MSME, which has been actively using the brand “KHADI” for various products applied for trademark registration of the device mark on 4th March 2021, submitting an affidavit of use and supporting documents. However, the Registrar refused registration on 17th August 2023, citing Section 9(1)(b) of the Trade Marks Act, 1999, which prohibits registration of marks that describe the nature, quality, or intended purpose of goods
2. The Delhi High Court had recognized “KHADI” as a well-known trademark in 2022 and is used for a wide range of products.
3. On 17th December 2020, KVIC announced the launch of anti-fungal, anti-bacterial paint made from cow dung, branded as “VEDIC PAINT”. The product was developed by Kumarappa National Handmade Paper Institute, which has also applied for a patent for this innovative paint. Later, on January 12, 2021, they rebranded the product as “KHADI PRAKRITIK PAINT”

Preliminary Refusal

On 19th March 2021, the Registrar raised two objections in respect of the said application:

1. Objection under Section 9(1)(b): The Registrar raised an objection stating that the mark consists exclusively of words that designate the kind and intended purpose of the goods or services or other characteristics. This was based on the argument that the words used in the mark were descriptive and lacked distinctiveness.
2. Objection under Section 11(1): The Registrar also raised an objection on the grounds that a similar mark existed in respect of identical or similar goods, which was waived in the final order under Appeal.

Petitioner’s Arguments (KVIC)

It was contended that:

• The mark must be considered as a whole: The Registrar erred by dissecting the device mark into individual components, rather than assessing its overall distinctiveness.
• Device marks have inherent distinctiveness: Even if a part of the mark is descriptive, a composite mark with a unique visual element (such as the cow-head logo) cannot be refused on descriptiveness grounds.
• KVIC had prior registrations: The Registry had already granted trademark registration for
  • The word mark “KHADI PRAKRITIK PAINT” in Class 2, which was registered on 11.02.2021.
  • The device mark “KHADI PRAKRITIK PAINT” with the image of the head of a cow and the words “KHADI INDIA” written at the top.

The inconsistent approach of the Registrar in refusing the later application was arbitrary.

• The mark had significant public recognition: KVIC had widely promoted the mark on social media and through government-backed endorsements. The Registrar’s insistence on sales invoices ignored the publicity and brand recognition generated for the mark.
• Judicial precedents were ignored: KVIC relied on the Supreme Court’s ruling in Registrar of Trade Marks v. Ashok Chandra Rakhit Ltd. (1955) and the Delhi High Court’s decision in Abu Dhabi Global Market v. Registrar of Trade Marks (2023), which affirm that composite marks should not be dissected for distinctiveness assessment.
• Wrongful Recording of Affidavit Submission. The Registrar incorrectly noted that KVIC had not filed an affidavit to support use, despite such an affidavit being on record.
• Publicity Constitutes Sufficient Use: The Registrar’s focus on invoices overlooked that brand use can also be shown through public promotion and intent to adopt, as held in Consolidated Foods Corporation v. Brandon & Co. (1965).

Registrar of Trademarks advanced the following Arguments

1. The mark was purely descriptive: The words “Prakritik” (meaning “natural”) and “Paint” were merely indicative of the nature of the product and could not function as a trademark.
2. No exclusive rights could be claimed over common words: KVIC could not monopolize terms like “Prakritik” and “Paint”, which are commonly used in the industry.
3. The mark did not demonstrate distinctiveness: The Registrar insisted that KVIC had not provided sufficient documentary proof of commercial use, such as invoices or sales figures, to establish consumer recognition.
4. The statutory provisions supported refusal: Section 17 of the Trade Marks Act states that when a mark consists of several elements, only the whole mark is protected, and non-distinctive elements cannot be monopolized.

Bombay High Court’s Ruling

The Court ruled in favour of KVIC, holding that:

1. A device mark must be considered as a whole: The Registrar wrongly dissected the mark, instead of assessing its overall distinctiveness. The Court reaffirmed that composite marks should be evaluated holistically.
2. Prior Registrations Strengthen KVIC’s Case: The Court questioned why the Trademarks Registry had granted similar registrations to KVIC earlier but refused this one, calling the refusal inconsistent.
3. Publicity and Brand Recognition: The Court rejected the argument that KVIC had to provide invoices, recognizing that public use and widespread promotion were sufficient to establish distinctiveness. The Court held that KVIC provided sufficient evidence of mark usage through advertising and promotions, which the Registrar wrongly ignored. It reaffirmed that even a single actual use with intent to continue is enough to establish trademark rights.
4. Judicial Precedents reinforced: The Court cited Registrar of Trade Marks v. Ashok Chandra Rakhit Ltd. (1955) and Abu Dhabi Global Market v. Registrar of Trade Marks (2023), emphasizing that device marks inherently contain elements that cannot be individually registered, but the mark as a whole is still distinctive.
5. Arbitrary Refusal: The court observed that the Registrar failed to consider critical documents, including a prior Delhi High Court injunction in favour of KVIC against a third party for a similar mark and a favourable ruling by WIPO in a domain name dispute.

Key Takeaways from the Judgment

1. Device marks should be assessed holistically, not broken into individual elements for distinctiveness evaluation.
2. Publicity and recognition, extensive brand promotion can establish distinctiveness even in the absence of sales invoices.