The Hon’ble Delhi High Court, in Institute Of Directors v. Worlddevcorp Technology and Business Solutions Pvt Ltd & Ors. [CS (COMM) 611/2023, I.A. 16738/2023 & I.A. 16739/2023] held that commonly used words, or a non-distinctive combination of commonly used words, cannot be monopolised by any one person, so as to disentitle the rest of the world to the use thereof.

Plaintiff’s contentions

• The Plaintiff is the registered proprietor of the trade marks bearing no. 1180935 in class 16, INSTITUTE OF DIRECTORS bearing nos. 2535355 and 2535356 in classes 16 and 35 and bearing no. 2394163 in class 41 (“Plaintiff’s trade marks”);

• The Plaintiff uses the Plaintiff’s trade marks for running an institute as well as for conducting events, networking and other associated activities;

• The Plaintiff’s mark bearing no. 2394163 in class 41 has a disclaimer ‘No exclusive right over the descriptive matter appearing on label’ disentitling the Plaintiff from claiming any exclusive right over the descriptive matter appearing on the label;

• The Defendant No. 1 applied for registration of the mark in class 41 for ‘education; providing of training; entertainment; sporting and cultural activities’ (“impugned trade mark”);

• The Plaintiff is aggrieved by the use of the impugned trade mark and sought an injunction against the use by the Defendants of the words “Directors’ Institute”;

• The Defendants are using the mark “Directors’ Institute”, both as a phrase, as well as in the form of the logos and ;

• The Plaintiff’s stand, which was not disclosed, is in respect of the entire textual matter contained in Plaintiff’s mark i.e. “IOD Institute of Directors Building Tomorrow’s Boards”;

• The Plaintiff’s prior stand cannot disentitle the Plaintiff from claiming exclusivity in respect of the words “Institute of Directors”, especially when “Institute of Directors” was itself registered in the Plaintiff’s favour in other classes;

• Without prejudice, the Plaintiff’s prior stand at worst, extend to the Plaintiff’s right to claim exclusivity in respect of Class 41 and cannot impact the Plaintiff’s entitlement arising from the registration of its mark in Classes 16 and 35;

• After grant of registration, neither the examination report nor the plaintiff's reply would be relevant. [Reliance was wrongly placed on para 43 of Raman Kwatra v. KEI Industries Ltd; 2023 SCC OnLine Del 38]

• The Defendants having itself applied for registration of the mark “Directors’ Institute”, cannot be heard to contend that the mark “Institute of Directors” is descriptive and, therefore, disentitled to registration.[Reliance is placed on Mother Sparsh Baby Care Pvt Ltd. v. Aayush Gupta ; 2022 SCC OnLine Del 1061 and Automatic Electric Limited v. R. K. Dhawa ; 1999 SCC OnLine Del 27]

Defendants’ contentions

• The Plaintiff in a response to an objection raised by the Trade Marks Registry under Section 9 of the Trade Marks Act, 1999 (“Act”), in respect of the said trade mark bearing no. 2394163, specifically responded as under:
“It is pertinent to note that the words used in the mark are common English language words and are descriptive in nature and cannot belong to any one Proprietor. The Applied mark should be seen as a whole. It does not have direct reference to the characteristics like kind, quality, quantity or other characteristics of services. Moreover, the mark possess all the necessary pre-requisites laid down by the law to be termed as a mark as defined in section 2(1)(m) of the Trade Marks Act, 1999.”

• The Plaintiff has suppressed from this Hon’ble Court it’s prior stand in the reply to the examination report of the said trade mark and for such suppression too, the Plaintiff cannot be entitled to any equitable relief.

Observations

• The Plaintiff’s prior stand specifically states ‘words used in the mark are common English language words and are descriptive in nature and cannot belong to any one proprietor’ and has admitted that the textual component of the Plaintiff’s mark is descriptive as well and lacks distinctive character;

• The words used in the Plaintiff’s mark are common English words over which no one can claim ownership. In view thereof, the Plaintiff cannot claim ownership or exclusivity over the common English words “Institute of Directors”, or seek an injunction against the Defendants using “Directors’ Institute”;

• Words which are descriptive, or indicative of the nature of the services provided, or are lacking in distinctive character, are ex facie disentitled to registration, unless the mark has become well known. [Reliance was placed on clauses (a) and (b) of Section 9(1) of the Trade Marks Act, 1999];

• No monopoly can be claimed on words of common English or phrase of common English. Words of common English, lack distinctiveness or are incapable of distinguishing the goods or services, unless attained secondary significance. Words of common English even when put together to form a phrase of common English usage, cannot be registered. [Reliance is placed on Section 9(1)(a) of the Act];

• The Plaintiff’s prior stand (which was not disclosed by it) defeats the case of the Plaintiff at the prima facie stage. To be entitled to the equitable relief, it was incumbent on the Plaintiff to place the Plaintiff’s prior stand on record; and

• In view of the above, the Plaintiff’s prayer for interim injunction was declined.

Comment

Suppression of the Plaintiff’s own prior contrary stand coupled with the use of generic words in the Plaintiff’s trade mark and applying for the same as a trade mark appears to have weighed against the Plaintiff.