ORDER
S. Usha, Technical Member
1. The above application is for rectification of the trade mark ‘COFFEE TIME’ registered under application No. 555556 B in class 30 under the Trade Marks Act, 1999 (hereinafter referred to as the Act).
The applicant is engaged in the business of manufacturing and selling wide range of food and allied products including cereals, milk dietetic products, beverages like coffee culinary products including pasta, noodles, sauce, soups, frozen products, ice creams, refrigerated products including cheese, cold meat products, chocolates, confectioneries, biscuits and Pharmaceuticals under various brand names such as Nestle, Maggie, Kitkat, Milkmaid, Nescafe etc. The applicant as one of the world’s leaders in the food industry was the first to produce infant formula.
2. The impugned trade mark ‘COFFEE TIME’ is a laudatory epithet which is devoid of any distinctive character. It is also not capable of being distinguished. As the mark is not capable of acquiring distinctiveness is not capable of being registered. The impugned trade mark registration is in contravention of the provisions of Section 9(1) (a), (b) and (c) of the Act. The trade mark is wrongly remaining on the Register and is to be removed under Section 57(2) of the Act.
3. The application for registration of the impugned trade mark was made in the year 1991 claiming user since 1991. The same was advertised in the year 1999. The applicants had not opposed the registration of the mark due to inadvertence. The applicants came to know of the impugned trade mark registration from the search report in November 2006.
4. The impugned trade mark registration is liable to be rectified on the grounds that the mark is registered in contravention of the provisions of Section 9(1)(a), 9(1)(b), 9(1)(c) and Section 57(1)&(2) of the Act.
5. The matter was heard on 23.01.2008 at Chennai. Shri Hemant Singh, learned advocate appeared on behalf of the applicant. Even after service by way of substituted service none appeared on behalf of the respondent.
6. The learned Counsel for the applicant mainly contended that the impugned trade mark ‘COFFEE TIME’ is descriptive and is devoid of any distinctive character. He drew our attention to the Trade Mark Journal advertisement of the impugned trade mark and submitted that the mark applied for was of the year 1991 and the user claimed was also of the year 1991 and that the mark could not have acquired distinctiveness in this short period of use. He also pointed out from the Trade Mark Journal that the associated mark bearing No. 549820 is abandoned and produced a search report in proof of the same.
7. The counsel for the applicant further submitted that the mark was registered in contravention of the provision of Section 9 of the Act. The learned Counsel for the applicant also submitted that the mark was too descriptive of the goods and that the mark cannot be registered in contravention of the provisions of the Trade Mark law.
8. The counsel for the applicant relied on various judgments in support of his contentions.
(i) Hardline Trading Ltd. and Anr. v. Addisons Paint and Chemicals Ltd. , was relied on to support his contention that a person aggrieved has to be ascertained liberally and the interest of the public is to be considered and not an individual carrying on the same trade. Here the applicants are aggrieved as they are carrying on similar goods and also that the mark was wrongly remaining on the Register.
(ii) Ciba Ltd. v. M. Ramalingam and S. Subramaniam trading in the name of South Indian Manufacturing Co., Madura and Anr. – The duty of the court is always to protect the public irrespective of the fact what hardship or inconvenience is likely to be caused to a particular party.
(iii) Hindustan Development Corporation Ltd. v. The Deputy Registrar of trade Marks and Anr. and Corn Products Refining Co. v. Shangrila Food Products Ltd., – The use of a common word or a language are public property and that no one would have exclusive right to use which may deprive the other persons’ right to use the said words.
(iv) Chandra Bhan Agarwat and Anr. v. Arjundas Agarwal and Ors. – Words of a descriptive nature cannot be adopted to distinguish and therefore cannot be registered.
(v) Impartial Tobacco Co. of India Ltd. v. Registrar of Trade Marks and Anr. – Distinctiveness in trade has to be established. The mark may acquire distinctiveness by use which has to be proved. The said judgment was confirmed by the Division Bench.
9. The learned Counsel for the applicant concluded his argument by praying that the application be allowed by removing the impugned trade mark ‘COFFEE TIME’ registered under No. 555556-B from the Register of trade mark.
10. We have carefully considered the arguments of the counsel for the applicant and have also gone through the pleadings.
11. The first issue to be decided is whether the applicant is an aggrieved person. The provisions of Section 21 of the Act contemplates that any person may file an opposition to the registration of the trade mark whereas an aggrieved person may alone file an application for removal of the trade mark from the Register of Trade Marks. The main object to rectify a mark is to purify the register which is a public purpose. Keeping in mind the interest of the general public, the rights of the applicant is determined. Following the principles laid down in (supra) the rights of the parties are to be ascertained as to aggrieved person as laid down in Powell’s Trade Mark case. The applicant herein is a person aggrieved under Section 57 of the Act, wherein the interest of the public is to be considered and not the interest of the individual and the applicant is carrying on business of similar goods.
12. For expunging or varying the entry wrongfully made or remaining in the Register, as per the provisions of Section 57 of the Act, the locus stand would be determined liberally since it would not be against the interest of the other persons carrying on the same trade, but also in the interest of the public to have the mark removed from the Register of Trade Marks.
13. It is worth mentioning the definition of aggrieved person by the House of Lords in Powells Trade Mark Case 1894 (11) RPC 4 – “although they were no doubt inserted to prevent officious interference by those who has no interest at all in the Register being correct and to exclude a mere common informer, it is undoubtedly of public interest that they should not be unduly limited, in as much as it is public mischief that there should remain upon the Register a mark ought not to be there, and by which many persons may be affected, who nevertheless would not be willing to enter upon the risk and expenses of litigation.
Whenever it can be shown, as here, that the applicant is in the same trade as a person who has registered the trade mark and whenever the trade mark, if remaining on the Register would or might limit the legal rights of the applicant so that by reason of the existence of the entry on the Register he could lawfully do that which, but for the existence of the mark upon the Register, he could lawfully do, it appears to me, he has a locus standi to be heard as an aggrieved person.”
14. On the above principles we find that the mark being too descriptive of the goods the applicant who is also trading in the same goods is being affected and could so be termed an aggrieved person. As per the provisions of Section 57 of the Act, the applicant, in our view is an aggrieved person.
15. The other issue for consideration is whether the mark qualifies for registration as per the provisions of Section 9 of the Act. Sub-section (1) of Section 9 consists of three parts namely (a) trade marks which are devoid of distinctive character (b) trade marks which may serve in trade to designate the kind, quality, quantity, value or other characteristics of the goods or services (c) trade marks which have become customary in the current language or in the bona fide and established practice of the trade. The provisions are the grounds for refusal of registration. The proviso to the Sub-section (1) provides that a trade mark shall not be refused registration, if before the date of application for registration it has acquired a distinctive character, as a result of the use made of it or is a well known mark.
16. The word which may be used to describe the character of the goods can be used only to describe and not to distinguish the goods of one person from those of another person. The trade mark which are descriptive of goods are not considered prima facie capable of distinguishing. The trade mark to be registered should be either inherently capable of distinguishing or should have acquired distinctiveness by use before the date of application. Here in the instant case, we find that the application for registration of the trade mark has been made in the year 1991 claiming user since the year 1991. The trade mark has thus not acquired distinctiveness nor is capable of being distinguished in this short span of time. Moreover here we find the trade mark is more descriptive. The mark which has direct reference to the character of goods is thus considered as inherently not capable of distinguishing. The registration, of the impugned trade mark is in contravention of the provisions of Section 9 of the Act. On this ground the trade mark is liable to be removed from the Register of trade marks.
17. We accordingly allow the application and direct the Registrar of Trade Marks to remove the trade mark registered under No. 555556 B in class 30 from the Register. There shall be no order as to costs.