In the case of Abu Dhabi Global Market v. The Registrar of Trade Marks The application submitted by the appellant requesting registration of the device mark was rejected, and an appeal was filed against that decision, which was made by the Assistant Registrar in the Registry of Trade Marks.
The appellant’s attorney claimed that there was no evidence to justify the conclusion that the mark was not unique. He further argued that because the mark was already registered in the appellant’s favour, the Registrar of Trade Marks had determined that the device mark was distinctive and did not violate any of the habitational factors listed in Section 9 of the Trade Marks Act, 1999 (the “Act”), which would have prevented the registration of the mark. It was further argued that since the mark was distinctive, it could not be made less recognisable by having the words ABU DHABI GLOBAL MARKET added underneath it.
The Assistant Registrar had correctly refused to register the mark due to the absolute prohibition against such registration contained in Section 9(1)(b) of the Act, and for the same reason the mark, which was being sought to be registered, also lacked distinctiveness. The respondent’s attorney claimed that Abu Dhabi was the name of a place and made up the majority of the mark that was sought to be registered.
Analysis of court order
There was no evidence that the mark had been used by anyone else, and the mark itself combined the motif with the words “ABU DHABI GLOBAL MARKET” below it, so there was no justification for concluding that it was not distinctive, according to Justice C. Hari Shankar of the Delhi High Court Single Judge Bench. An application to register a device mark was turned down. The Court additionally expressed its displeasure with the Assistant Registrar’s performance of her duties in this case and stated that the officer presiding over the application should have extended no less than the most basic decency of application of mind.