INTELLECTUAL PROPERTY APPELLATEBOARD
CIRCUIT SITTING AT DELHI
FRIDAY, THIS THE 8th DAY OF JUNE, 2012
Hon’ble Smt. Justice Prabha Sridevan … Chairman
Hon’ble Shri V. Ravi … Technical Member (Trade Marks)
American Gem Society Laboratories LLC
8917, West Sahara Avenue,
NEVADA, 89117, United States of America. … Appellant
(By Advocate: Shri Tarvinder Singh & Shri Anshuman Sharma)
The Deputy Registrar of Trade Marks
Trade Marks Registry
Intellectual Property Bhawan
Plot No.32, Sector-14, Dwarka,
New Delhi-110075. … Respondent
(By Advocate: None)
Hon’ble Shri V. Ravi, Technical Member:
On 22nd July, 2008 the Deputy Registrar of Trade Marks refused two applications filed by American Gem Society Laboratories LLC giving rise to these appeals. The language used explaining the grounds of refusal is identical/similar. The appeals were also listed before us on the same day. We have heard the submissions of Counsel one after the other. Since the grounds of appeal and decision are similar we are disposing of these two appeals through a common order. The trade marks refused are detailed as under:
(i) “SETTING THE HIGHEST STANDARD FOR DIAMOND GRADING” under No.1365886 in Class 42.
(ii) The second application was “AMERICAN GEM SOCIETY LABORATORIES” filed by the above mentioned firm with the same name in respect of Gemological services, namely, grading precious stones under No.1365887 also in Class 42.
Both the marks were ‘proposed to be used’. The Appellant is a premier diamond grading laboratory for cut diamond and provide complete grading analysis of colour, clarity and carat weight. The appellant are in this business since 1996 and claim to be the industry leader for diamond grading. The appellant are also the registered proprietor of the impugned trade mark in US, Japan, Canada, UAE, Benelux and several other countries. In India the application was made in June, 2005. It was duly examined and the Examination Report raised objection under Section 9(1)(b) of the Trade Marks Act, 1999 (in short ‘Act’) on ground of geographical significance and also on relative grounds. The appellant submitted a detailed response to the Examination Report contesting both the objections. As the registry refused to waive the objections, a Show Cause hearing was appointed. Surprisingly, it refixed the matter for hearing thrice over and finally by an order dated 22nd July, 2008, both the impugned applications were refused under Section 9(1)(b) of the Act on the ground that the subject mark was not capable of distinguishing the goods or services of one person from another. The operative part of the order of refusal reads as follows:
‘The trade mark “AMERICAN GEM SOCIETY LABORATORIES” and “SETTING THE HIGHEST STANDARD FOR DIAMOND TRADING” is highly descriptive to their services and directly refer to character or quality of the services. No evidence for honest adoption and honest use of the trade mark has been filed as the trade mark is proposed to be used on the date of application. No evidence is filed to prove the acquired distinctiveness.
After going through the records available before this Tribunal and after hearing the arguments/submissions of the learned Advocate, I have come to the conclusion that trade mark application is open to objection under Section 9 of the Trade Marks Act, 1999 and liable to be refused.’
2. Being aggrieved by this decision, the appellant have preferred an appeal before this Board. The grounds of appeal are briefly summarized as follows:
(a) The Deputy Registrar has failed to state in writing the ground of refusal and the material used by him while refusing the impugned application.
(b) It is not enough merely to cite one Section of the Act and refuse an application.
(c) The Deputy Registrar has not taken cognizance of the TM-16 filed by appellant on 03.01.2006 for amending the legal status of the appellant firm to American Gems Societies Laboratories, LLC.
(d) The Deputy Registrar in his impugned order has stated that “No evidence for honest adoption and honest use had been filed as the trade mark is proposed to be used on the date of application.” This objection was never raised either in the Examination Report or even at the time of hearing. The impugned mark is the corporate identity of the appellant since 1996 and just because it is proposed to be used in India, the inference that it is lacking ‘honest adoption and use’ is erroneous and bad in law.
(e) It was submitted in response to the Examination Report and also during the hearing that the trade marks “AMERICAN GEM SOCIETY LABORATORIES” and “SETTING THE HIGHEST STANDARD FOR DIAMOND GRADING” has been used since 1996 through print and electronic media and evidence of a few advertisement materials were also furnished that was totally disregarded. The order of the Deputy Registrar is therefore bad in law and should therefore be set aside.
3. The Deputy Registrar had come to the conclusion that the impugned marks “American Gem Society Laboratories” and “Setting the highest standard for diamond grading” are liable to be refused registration. However, where he has erred is not providing a detailed speaking order justifying his decision which has resulted in this appeal. We uphold both the orders of the Deputy Registrar for the following reasons:
(i) The mark under No.1365887 has reference to the geographical origin of the services. It has also reference to the goods (gems) in respect of which it renders services relating thereto. The reference to “American” when applied to “gemological” services will only serve to indicate such services that are being rendered at the particular place namely, “America”. Prima facie, the impugned mark is not capable of serving the purpose of a trade mark which is to indicate trade source of goods/services in India. Section 9(1)(b) of the Act is an absolute bar for registration of a trade mark which indicate a geographical origin. The prohibition in the case of geographical name is not confined to the noun substantive but extends to the adjectival form too. Thus the use of the expression “American” in the impugned mark is prohibited by law. Here the mark is not a fanciful suggestion of association with a geographical location like “Evening in Paris’. The geographical name ‘American’ in its primary and obvious meaning would designate the place where its goods are produced or services rendered and its registration in Indiawould be deceptive. Hence there is no question of its registration as a trade mark in India as a proposed mark.
(ii) Similarly, the second mark “SETTING THE HIGHEST STANDARDS FOR DIAMOND GRADING” is totally descriptive of the services it renders and has no source origin capabilities and is incapable of distinguishing goods or services of one undertaking from others. The test is to co-join the mark to the services and consider what the word would mean to the average purchaser concerned with such services. In this case there is an instantaneous perception of descriptiveness. There is no doubt in our mind of the impugned mark being laudatory and it cannot be allowed to be monopolized.
(iii) Secondly, both the impugned marks are “proposed to be used” in India. As a proposed mark “AMERICAN GEM SOCIETY LABORATORIES” does not qualify for registration as it is not capable of distinguishing the goods/services from other and does not establish origin function and cannot be a source indicator. The fact that the impugned mark is used outside in India (since 1996) does not add any weight to the applicant’s case. The intent of the law is if a mark fails to pass the threshold test of ‘capable of distinguish’, its use over time may enable it to do so but with the rider that such use should be in the Indian market. That not being the case here, the application is not able to meet the primary objection raised in the Examination Report.
(iv) Similarly, in our view the trade mark “SETTING THE HIGHEST STANDARD FOR DIAMOND GRADING” is totally descriptive and laudatory. It tells potential customers, whether retailers or end users, that the services rendered by it will help them make profits. The legal principle is honest traders should not need to consult the register to ensure that common descriptive or laudatory terms have been monopolized.
4. The next ground relied on was both the impugned marks have been registered in a number of other countries. It is well settled that the trade marks law is territorial in nature and registration of a mark in any number of countries (including US) will have no bearing on its registration in Indiaunder our law.
5. The appellant had drawn our attention that the Registry has in the past in several instances accepted and published slogans/taglines as detailed below:
(a) Smile tonic for Indian Roads
(b) Life can be so delicious
(c) Serious food served with fun
(d) Making money or just chips(for computer software)
(e) Everyone has a reason to pray (for Agarbathis)
(f) Make your prayer truly divine(for Incence stick)
(g) Whenever you need us, we are close to you (for consultation services relating to engineering).
Many other examples have been given. In our view, each case has to be decided on its own fact. It is not possible to state in general terms what it is that gives any particular mark its distinctive character. In our judgment both the impugned marks serve in normal usage from the consumer’s point of view to designate, either directly or by reference to one of their essential component/ingredients, the services such as those in respect of which registration is sought. Neither of these two marks “AMERICAN GEM SOCIETY LABORATORIES” nor “SETTING THE HIGHEST GRADE FOR DIAMOND GRADING” is lexical invention nor syntactically unusually juxtaposed. Thus in our considered view both the impugned trade marks are totally devoid of any distinctive character.
6. We therefore uphold the order of refusal of application No.1365886 and 1365887 both in Class 42 by the Deputy Registrar.of Trade Marks. The appeals OA/97/2008/TM/DEL and OA/98/2008/TM/DEL are consequently dismissed.
(V. Ravi) (Justice Prabha Sridevan)
Technical Member (Trade Marks) Chairman
(This order is being published for present information and should not be taken as a certified copy issued by the Board.)