In the Matter of Navaid Khan v. Registrar of Trade Marks Office The Registrar of Trade Marks’ decision to register the appellant’s device mark “CruzOil” was challenged in an appeal under Section 91 of the Trade Marks Act of 1999.
The Registrar raised an objection under Section 9(1)(b) of the Act on the grounds that the mark consisted solely of words that might be used in the trade to designate the intended purpose of the goods when the appellant submitted the relevant application for registration of the subject mark in Class 4. The contested order was issued in 2023 and rejected the appellant’s subject application. The appellant then submitted the current appeal.
According to the appellant’s attorney, the subject mark was wholly arbitrary and had nothing to do with the products, industrial lubricants, making it distinctive and arbitrary. A device mark that combines words and devices must be taken into account as a whole for registration because the word “CruzOil” does not have any dictionary definition.
The respondent’s legal representative argued that because the mark was descriptive and identified the type and intended use of the goods, the Registrar had every authority to reject the application as stated in Section 9(1)(b) of the Act.
Observation of the Court
According to Justice Amit Bansal of the Delhi High Court’s Single Judge Bench, CruzOil is a composite mark that is exempt from Section 9(1)(b) of the Trade Marks Act and is registrable. The Court dismissed the contested order after allowing the appeal.
The Court held that, in order to obtain registration, the mark’s combination of words and devices needed to be taken into account as a whole. The disputed mark was a device mark that included a number of distinctive and arbitrary components, including the slogan “Lifeline for Engines,” a background colour of yellow with two rings of purple, and an unusual design of semicircles with representations of four stars on opposite sides and a pattern of slanting parallel lines. The Court concluded that the Registrar erred by breaking the subject markdown into its component elements while deciding whether to register it.
The Court mentioned several composite marks with the term “Cruz” that had been registered under Class 4 in its ruling. The appellant had disclaimed having the only right to use the phrase “Oil,” the court also noted. The Court dismissed the contested order after allowing the appeal. Additionally, the Court instructed the Trade Marks Registry to promote the subject application in accordance with the proviso to Section 20 of the Act.