Allowed

Maharashi Patanjali Vidya Mandir Samiti v. Registrar Trade Marks

Delhi HC9 Feb 2024C.A.(COMM.IPD-TM)/109/2021

Case brief

AI extract

What is this about?

The Delhi High Court allowed an appeal in a multi-class trademark registration for 'PATANJALI'. It held that the modified device mark, distinct from cited trademarks and accompanied by a disclaimer for the word 'PATANJALI', could proceed to advertisement under proviso to Section 20(1) of the Trademarks Act.

What did the court decide?

The appeal was allowed, the impugned order was set aside, and the Registry was directed to advertise the modified mark within three months subject to a disclaimer on the words 'PATANJALI' and 'PRAYAG'

Maharashi Patanjali Vidya Mandir Samiti Vs Registrar… — Intellectual Property | Delhi HC (2024)

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$~8

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IN THE HIGH COURT OF DELHI AT NEW DELHI

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- C.A.(COMM.IPD-TM) 109/2021

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MAHARASHI PATANJALI VIDYA MANDIR SAMITI

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..... Appellant

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Through: Mr. Amique Khalid and Mr. Shahid Khan, Advocates.

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versus

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REGISTRAR TRADE MARKS ..... Respondent

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Through: Mr. Harish Vaidyanathan Shankar, CGSC with Mr. Srish Kumar Mishra, Mr. Alexander Mathai Paikaday and Mr. Krishnan V., Advocates.

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CORAM: HON'BLE MR. JUSTICE SANJEEV NARULA

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O R D E R % 09.02.2024

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The Appellant had preferred an application for multi-class registration of the trademark “PATANJALI” under application No. 2123887,¹ which has been refused by Respondent on 04^th September, 2018 on the ground of Sections 9(1)(b), 11(1)(a) and 11(1)(b) of the Trademarks Act, 1999 [ hereinafter, “ Act ”].² The present appeal is directed against the said refusal. 2. During the pendency of the appeal, to meet the above-noted objections, the Appellant has modified the subject mark from the word mark

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1 For classes 16, 25 and 41.

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2 As per Statement of Grounds and Reasons dated 28th September, 2018.

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This is a digitally signed order. The authenticity of the order can be re-verified from Delhi High Court Order Portal by scanning the QR code shown above. The Order is downloaded from the DHC Server on 16/12/2024 at 14:59:44

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“PATANJALI” to a device mark “ ”, and to bring the said change on record, the Appellant has also filed Form TM-M on 05^th January, 2023 (bearing Ref No.: A-2123887) with the Trademarks Registry.

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Counsel for Respondent submits that even the modified device mark should not be accepted in view of declaration of “PATANJALI” as a wellknown mark in relation to Ayurvedic, Medicines, Herbal Home Care, Food Product and Natural Personal Care, by the Registrar of Trademarks. 4. The Court has considered the afore-noted. The modified mark applied for is a composite logo, containing several features such as an encircled device of a book with a rising sun, with the words “MAHARISHI PATANJALI VIDYA MANDIR SAMITI”, “PRAYAG” and “��ान��ा” written around it, thereby distinguishing it from the marks cited in the Examination Report dated 21^st June, 2012. Further, counsel for Appellant, on instructions, states that Appellant is willing to disclaim the word “PATANJALI” which is the name of Revered Maharshi Patanjali, the author of Yoga Sutra. Insofar as the objection under Section 9(1)(b) of the Act is concerned, since the Appellant seeks to utilize the modified mark primarily in relation to educational services and allied activities, in the opinion of the

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Court, the device mark “ ” cannot be held to be a trademark

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that would serve in trade to designate the kind, quality, characteristics etc. of the services for which it is to be applied.

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For the foregoing reasons, the Appellant’s application for the modified mark can proceed to advertisement before acceptance as per proviso to Section 20(1) of the Act. Accordingly, the appeal is allowed with the following directions:

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(a) The impugned order dated 04^th September, 2018 read with the Statement of Grounds dated 28^th September, 2018 is set aside. (b) Trademarks Registry is directed to process the Form TM-M filed by Appellant within four weeks from today, whereafter, the modified mark

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“ ” be advertised before acceptance as per proviso of Section 20 of the Act, within a period of three months.

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(c) It is clarified the subject mark shall not grant any exclusive rights in the words “PATANJALI” or “PRAYAG”. This disclaimer/ condition shall be reflected in the Trademarks Journal at the time of advertisement as also if the subject mark ultimately proceeds for registration.

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(d) On advertisement in the Trademarks Journal, an intimation shall be sent by Trademarks Registry to the registered proprietor of the cited marks. (e) If there is any opposition, the same shall be decided on its own merits, uninfluenced by observations made hereinabove.

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(f) Appellant shall also send a copy of the order passed today to the proprietor of competing/ cited marks.

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With the above directions, the appeal is disposed of along with pending application(s), if any.

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Registry is directed to supply a copy of the present order to the Trade Marks Registry at [email protected] for compliance.

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SANJEEV NARULA, J

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FEBRUARY 9, 2024 as

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This is a digitally signed order.

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The authenticity of the order can be re-verified from Delhi High Court Order Portal by scanning the QR code shown above. The Order is downloaded from the DHC Server on 16/12/2024 at 14:59:44

Maharashi Patanjali Vidya Mandir Samiti v. Registrar Trade Marks

Case brief

What is this about?

What did the court decide?

Maharashi Patanjali Vidya Mandir Samiti v. Registrar Trade Marks

Case brief

What is this about?

What did the court decide?

What the court decided

A compact analysis

Issues for consideration

Statutes considered

Parties & counsel

Coram

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