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Agatha Christie Ltd., the appellant, applied for the registration of the book “And Then There Were None” under Trademark classes 9, 16 and 41 according to the Trademark Rules, 2017. The appellant was served a show-cause notice, purporting rejection of the registration of the mark, which was responded to by the appellants. The appellant was heard and following impugned order was passed, rejecting the application, to which Agatha Christie Ltd. appealed to the Delhi High court against the decision of the Registrar of Trademarks.
Whether the mark is distinctive or not?
The appellants contend that no mark exactly the same or similar to “And Then There Were None” was in use, till the date of the application for registration. No trademark existed, not only in regards to the goods and services provided by the appellants but also in regards to any other goods and services.
The impugned order contended that as it is an applied mark, people are required to learn that it is not just any phrase or term but it is actually a trademark made to be used in that way. Although the applied mark has not been in use as a trademark, it lacks distinctiveness, so it cannot be registered.
However, the impugned order makes no declaration to any findings or observation that whether the mark cannot be graphically portrayed or its distinguished products and services that the appellants offer or will offer, from products and services from other enterprises.
It was viewed that the impugned order could sustain, neither in facts nor in law. Since the Court cannot comprehend as to why, the mark, “And Then There Were None” is not distinctive enough, even when seen in accordance to the goods and services it requires the registration for. The impugned order could not show that the proposed mark is deceptively similar to any previous trademark, or is in use in relation to similar or identical goods and services, with respect to the registration sought by the appellant. Also, the mark proposed was not descriptive of the goods and services of the enterprise either.
A trademark cannot be registered if the applied-for mark suffers from any doubts that the Trademark Act of 1999, sets out in any of its provisions. However, the same Act confers such rights to register a trademark if the application does not contain any infirmities. The grounds on which a trademark can be refused are provided under Sections 9, 11 and 13 of the Trademark Act of 1999. They are as follows-
● The mark is not distinct. That it is devoid of any distinguishable characteristics from other marks of other enterprises. (Section 9(1)(a))
● The mark exclusively contains indications of the nature of the goods and services, quantity and quality, geographical location of origin, the purpose of use, time of production or other values. (Section 9(1)(b))
● It is a generic mark. (Section 9(1)(c))
● The mark is deceptive in nature and can cause public confusion. (Section 9(2)(a))
● The mark can hurt religious sentiments across any class or section of Indian citizens. (Section 9(2)(b))
● The mark is of scandalous and obscene nature. (Section 9(2)(c))
● The mark is prohibited under the Act of Emblems and Names (Prevention of Improper Use) Act, 1950. (Section 9(2)(d)
● The mark consists of the shape of goods that are a result of the nature of the goods themselves. (Section 9(3)(a))
● The mark is susceptible to creating confusion in public due to its identity being similar to an earlier trademark and the products and services offered by such an earlier trademark. (Section 11(1))
● That the mark is similar to a previous trademark but the goods and services offered are not similar. If it is similar to a well-known trademark in the Indian subcontinent and its meaning lies within the ambit of Section 2(1)(zg), registration of such a new mark can cause unfair advantage or dilute the reputation of the previous mark. (Section 11(2))
● The registration of the mark is prohibited by any other law in India, by virtue of the laws preventing passing off, protecting unregistered trademark and copyright laws. (Section 11(3))
● The mark is the name of a chemical element or a compound. (Section 13(a))
● The mark is declared by the World Health Organization (WHO) to be an international non-proprietary name or is deceptively similar to such declared name by WHO. (Section 13(a))
Refusal of registration of a mark as a trademark has been specifically provided in the provisions of the Trademark Act of 1999, and the circumstances under which registration can be refused have to be regarded to be exhaustive. And if any of these circumstances are absent, the application for the registration of the trademark cannot be refused.
“Trademark” and “mark” are defined under Section 2(1)(zb) and Section 2(1)(a) of the Trademark Act, 1999. It is as follows-
● “Mark” includes device, ticket, label, heading, brand, name, signature, word, letter, numeric, packaging of goods, and shape of goods, colour combination or any other combination.
● “Trademark” includes any mark which is capable of being represented graphically and distinguishes products and services of one enterprise from another. It can include the packaging of the goods, the shape of goods not inherent to the nature of goods and the combination of colours.
● A registered trademark can be used in relation to the goods and services it provides and can indicate a connection in the course of trade of such goods and services, by the proprietor having such right.
● A mark used or proposed to be used for trade of certain goods and services for the very purpose of indicating the course of trade of such goods and services by any person having the right, and includes a certification of the trademark or collective mark.
Thus from the above, it is implied that names and words or combinations of names and works are considered to be “marks” under the ambit of the Trademarks Act, 1999. The requirement for it to become a “trademark” is that it should be able to be represented graphically and should be able to distinguish the goods and services of the enterprise from others.
There is no finding that the applied mark, “And Then There Were None” is not able to be represented graphically or that it is not distinctive enough to be able to distinguish the goods and services of the enterprise from other enterprises
It was in fact observed that the mark, “And Then There Were None” is recognized as Agatha Christie’s most well-known work of fiction. It is prima facie possible to establish a link between the appellant and the book by the appellant. The appellant is a firm established by Agatha Christie herself. Therefore, the applied mark, “And Then There Were None” can be used as a trademark to provide goods and services that the firm offers or will offer.
The impugned order has not made due justification for the denial of the registration of the applied mark.
The impugned order should be set aside for its lack of reasoning in denying the appellants' registration of the applied mark. It was further observed that in lieu of Article 19(i)(g) of the Constitution of India 1950, which gives one the fundamental right to carry on any trade or business or to practice any profession, it is inconsistent. Since, the right to register a trademark and to intend to provide goods and services under such trademark is a valuable right whose essence lies with the lawful rights under Article 19(i)(g) of the Constitution of India, 1950.
The decision to not allow the registration of the applied mark must be purported with valid reasoning and such reasoning must be apparent in the face of such decision. However, the impugned order is lacking such substantial reasoning.
If the application to register, “And Then There Were None” is bereft of any other shortcomings and infirmities, then the trademark should be allowed to be registered under the proposed trademark classes 9, 16 and 41.
Justice C Hari Shankar of the Delhi High Court and the Judge, in this case, quashed and set aside the impugned order rejecting the registration of the applied mark, and the case was remanded to the Registrar of the Trademark Office.