Grey Matters Education Trust vs. Examiner of Trade Marks: Trademark Infringement Case

Grey Matters Education Trust vs. Examiner of Trade Marks: Trademark Infringement Case. Court: High Court of Delhi
Coram: Hon'ble Ms. Justice Mini Pushkarna
Date of Judgment: October 23, 2024
Relevant Statutes:
-Trade Marks Act, 1999, Sections 9, 11, 17, and 91
-Trade Marks Rules, 2017
Background:
1. Parties Involved:
-Appellant: Grey Matters Educational Trust, represented by Mr. Kunal Khanna and other counsel.
-Respondent: Examiner of Trade Marks, represented by Mr. Harish Vaidyanathan Shankar and others.
2. Issue: The appellant sought to challenge the rejection of its trademark application for "Planet E School" under Class 41 (educational services). The rejection was based on Sections 9 and 11 of the Trade Marks Act, 1999, citing a lack of distinctiveness and a likelihood of confusion with existing trademarks.
3. Order Challenged: The Trade Marks Registry, on January 25, 2019, rejected the application for registration through a one-line order without detailed reasoning.
Arguments by the Appellant:
-The trademark "Planet E School" is visually, phonetically, and structurally distinct from the cited marks.
-Section 17 of the Trade Marks Act permits registration of trademarks with composite features even if certain elements are already registered.
-The appellant demonstrated honest and bona fide usage of the mark and agreed to restrict its registration to the State of Punjab.
Arguments by the Respondent:
-The word "Planet" is common to many existing trademarks, some of which pertain to educational services. Allowing the appellant’s mark would create confusion.
-As per Section 9(1)(A), the mark lacked distinctiveness and failed to establish a secondary meaning.
-The registration would give the appellant undue advantage over conflicting device marks containing "Planet."
Court’s Observations:
1. Impugned Order: The court noted that the Trade Marks Registry's one-line rejection lacked detailed reasoning or any discussion of the appellant's comprehensive reply to the First Examination Report (FER).
2. Anti-Dissection Rule: The court emphasized that trademarks must be viewed as a whole and not dissected into components.
-Cited Ticona Polymers v. Registrar of Trade Marks (2023 SCC OnLine Del 1234) and Vasundhra Jewellers Pvt. Ltd. v. Kirat Vinodbhai Jadvani (2022 SCC OnLine Del 3370) to reaffirm that the composite nature of marks should guide the determination of deceptive similarity.
3. Distinctiveness:
-Though the terms "Planet," "E," and "School" are generic individually, their combination created a distinctive mark.
-The appellant’s mark, when viewed as a whole, was capable of distinguishing its services from others.
4. Restriction to Punjab: The appellant’s willingness to restrict the trademark’s usage to Punjab mitigated concerns over confusion and strengthened its claim for registration.
Decision:
The High Court allowed the appeal with the following directions:
1. The January 25, 2019, order by the Trade Marks Registry was set aside.
2. The appellant's trademark application was directed to be processed with the following conditions:
-No exclusive right to the word "Planet" independently.
-The trademark registration and usage would be limited to the State of Punjab.
-The mark would be advertised as per the Trade Marks Act, 1999, and Trade Marks Rules, 2017, subject to opposition.
Significance of the Judgment:
This decision highlights:
-The importance of the anti-dissection rule in trademark disputes.
-The court's expectation for detailed reasoning in orders by the Trade Marks Registry.
-The balancing of trademark rights with conditions to minimize confusion.

Court: High Court of Delhi

Coram: Hon'ble Ms. Justice Mini Pushkarna

Date of Judgment: October 23, 2024

Relevant Statutes:

-Trade Marks Act, 1999, Sections 9, 11, 17, and 91

-Trade Marks Rules, 2017

Background:

1. Parties Involved:

-Appellant: Grey Matters Educational Trust, represented by Mr. Kunal Khanna and other counsel.

-Respondent: Examiner of Trade Marks, represented by Mr. Harish Vaidyanathan Shankar and others.

2. Issue: The appellant sought to challenge the rejection of its trademark application for "Planet E School" under Class 41 (educational services). The rejection was based on Sections 9 and 11 of the Trade Marks Act, 1999, citing a lack of distinctiveness and a likelihood of confusion with existing trademarks.

3. Order Challenged: The Trade Marks Registry, on January 25, 2019, rejected the application for registration through a one-line order without detailed reasoning.

Arguments by the Appellant:

-The trademark "Planet E School" is visually, phonetically, and structurally distinct from the cited marks.

-Section 17 of the Trade Marks Act permits registration of trademarks with composite features even if certain elements are already registered.

-The appellant demonstrated honest and bona fide usage of the mark and agreed to restrict its registration to the State of Punjab.

Arguments by the Respondent:

-The word "Planet" is common to many existing trademarks, some of which pertain to educational services. Allowing the appellant’s mark would create confusion.

-As per Section 9(1)(A), the mark lacked distinctiveness and failed to establish a secondary meaning.

-The registration would give the appellant undue advantage over conflicting device marks containing "Planet."

Court’s Observations:

1. Impugned Order: The court noted that the Trade Marks Registry's one-line rejection lacked detailed reasoning or any discussion of the appellant's comprehensive reply to the First Examination Report (FER).

2. Anti-Dissection Rule: The court emphasized that trademarks must be viewed as a whole and not dissected into components.

-Cited Ticona Polymers v. Registrar of Trade Marks (2023 SCC OnLine Del 1234) and Vasundhra Jewellers Pvt. Ltd. v. Kirat Vinodbhai Jadvani (2022 SCC OnLine Del 3370) to reaffirm that the composite nature of marks should guide the determination of deceptive similarity.

3. Distinctiveness:

-Though the terms "Planet," "E," and "School" are generic individually, their combination created a distinctive mark.

-The appellant’s mark, when viewed as a whole, was capable of distinguishing its services from others.

4. Restriction to Punjab: The appellant’s willingness to restrict the trademark’s usage to Punjab mitigated concerns over confusion and strengthened its claim for registration.