Registration of a trademark cannot be refused based on non-distinctiveness, when other variants of the same mark is already registered in the records of the Trade Marks Registry.

Registration of a trademark cannot be refused based on non-distinctiveness, when other variants of the same mark is already registered in the records of the Trade Marks Registry.

The trademark 'VIRTUOUS RETAIL' was objected by the Examiner of Trademarks under Section 9 (1) (b) of the Trade Marks Act, 1999 on the ground that the trademark consists exclusively of marks or indications which serve in trade to designate quality, intended purpose of the goods, etc. Therefore, the application for registration of the subject trademark was refused on the grounds mentioned above coupled with the fact that the proprietor could not produce any document of prior use of the mark.

An appeal was thereafter filed by the proprietor, wherein it was stated that they already obtained various registrations in respect of the mark 'VIRTUOUS RETAIL' (word and label) under different classes. He also obtained prior registration on 14th April, 2014 of the word mark in the same class as the present subject application.

The Court ruled that in view of various registrations for the trademark VIRTUOUS RETAIL already granted in respect of the mark/logo and other formative marks in favour of the appellant, the registration of the subject application could not have been refused.

Authors: Paramita Nandy Gupta, Ruchi Singh