Madras High Court Sets Aside Trade Mark Registrar’s Order, Directs Proceeding for Advertisement
Safiya Malik
The Madras High Court has set aside an order issued by the Registrar of Trade Marks that rejected an application for the registration of the word mark "RAW SKINN." The appellant, who had sought to register the mark under Class 3 for use in non-medicated cosmetic and skincare products, challenged the Registrar’s decision on the grounds that the mark was neither descriptive nor ineligible for trademark protection. The single-judge bench of Justice Senthilkumar Ramamoorthy examined the matter and concluded that the Registrar's order failed to provide adequate reasoning for rejecting the application. The court directed that the application be allowed to proceed to the advertisement stage, clarifying that the order would not prejudice any potential opposition proceedings.
The appellant had applied for the registration of the word mark "RAW SKINN" on September 27, 2021, under Class 3 of the Trade Marks Act, 1999, covering a range of goods, including bleaching preparations, soaps, essential oils, non-medicated cosmetics, and hair lotions. The application was filed with a claim of use from August 17, 2021.
On October 26, 2021, the Trade Mark Registry issued an examination report raising an objection under Section 9(1)(b) of the Trade Marks Act. This provision prevents the registration of marks that consist exclusively of words or indications that may serve in trade to designate the intended purpose or other characteristics of the goods. The Registrar asserted that "RAW SKINN" was descriptive of the goods for which it was applied.
The appellant responded to the objection on November 11, 2021, arguing that the mark was arbitrary and bore no direct connection to the nature of the goods. The response included references to legal precedents supporting the distinctiveness of the mark. However, on December 19, 2023, the Registrar rejected the application, concluding that the mark was descriptive.
The High Court examined the classification of trademarks and the distinctiveness spectrum, which includes arbitrary, suggestive, and descriptive marks. The court noted that while the appellant applied the mark to various cosmetic products, including soaps and body butter, the classification of the mark required contextual examination.
"The placement of a Trade Mark in the spectrum of distinctiveness cannot be done in isolation and is always required to be done in the specific context of the goods and services to which the relevant mark is applied," the court stated.
It was further observed that the mark did not appear to be purely descriptive but rather suggestive of the goods. The court noted that the term "RAW SKINN" could convey an indirect or abstract association with the products rather than a direct description.
"In the case at hand, it cannot be concluded, prima facie, that the mark is arbitrary. At the same time, in relation to these goods, it appears that the mark is suggestive rather than descriptive," the court recorded.
Additionally, the High Court examined the Registrar's reasoning in rejecting the application. The examination report had not cited any conflicting marks, nor did it provide a detailed evaluation of the appellant’s arguments. The court observed that the order merely concluded that the mark was descriptive without addressing the appellant’s contentions or explaining why the mark failed to qualify for protection.
"The contentions of the appellant have not been discussed and no reasons are recorded for rejecting the same," the judgment stated.
Upon finding that the Registrar’s order lacked sufficient reasoning, the High Court set aside the decision and allowed the trademark application to proceed to advertisement.
"Therefore, the impugned order dated 19.12.2023 is set aside and the appeal is allowed. It is directed that the application shall proceed for advertisement," the court directed.
However, the court held that its order did not prevent any third party from opposing the registration during the advertisement stage.
"It is made clear that this order will not be binding on opponents, if any," the judgment concluded.
Advocates who appeared for the parties
For Appellant: Mr. Kunal Khanna, S.Sachin Priya Daniel, For M/s. S. Suresh Kumar
For Respondent(s): Mr.S.N.Parthasarathi, Senior Stdg. Counsel for Central Govt
Case Title: Saranya Parthiban v. Registrar of Trade Marks
Case Number: C.M.A. (TM) No.4 of 2024
Bench: Justice Senthilkumar Ramamoorthy
[Read/Download order]
