Recently, the Delhi High Court set aside the Trade Mark Registry’s (“Registry”) order where the Registry refused the application filed by Mankind Prime Labs Private Limited (“Mankind”) for the mark CROSSRELIEF in Class 5. The Court ruled that, CROSS is common in the medical industry and is considered publici juris, thereby not subject to monopoly. Hence, the Court found that the mark CROSSRELIEF is visually and structurally distinct from the cited marks in the Examination Report.
The application for the mark CROSSRELIEF filed on a ‘proposed to be used’ basis, had been rejected by the Registrar of Trade Marks on the ground that the mark was deceptively similar to earlier marks and was likely to cause confusion under Section 11(1) of the Trade Marks Act, 1999 (the “Act”). Challenging this decision, Mankind contended that CROSSRELIEF is a coined and arbitrary term, being a portmanteau of CROSS and RELIEF, and has no dictionary meaning. It was argued that the mark is inherently distinctive and should be considered as a whole, rather than being dissected into its individual elements. Mankind also submitted that CROSS is a common term in the medical industry, descriptive in nature, and publici juris, and therefore, there can be no monopoly over it. Mankind further argued that there exist discernible differences between the mark CROSSRELIEF and the cited mark(s) in the Examination Report, when assessed as a whole. Hence, refusal of the mark on the grounds of Section 11(1) of the Act, is misplaced and unfounded.
The Court concurred with Mankind’s submissions and reiterated the principle that a composite trademark must be evaluated in its entirety. The Court held that the mark CROSSRELIEF, being arbitrary and not a dictionary term, was not only fanciful but also distinctive in nature when viewed as a whole. The Court added that term CROSS is common in the medical industry and publici juris, over which no one can claim monopoly. Hence, while comparing the marks, the consumers are likely to ignore such common elements in the marks i.e., CROSS and will focus on the distinctive element.
In conclusion, the Court set aside the impugned order dated 17.10.2023 passed by the Registrar and allowed the mark CROSSRELIEF to proceed for registration. However, it clarified that such registration would not confer exclusive rights over the individual terms CROSS or RELIEF in isolation.
[Mankind Prime Labs Private Limited Vs. Registrar of Trade Marks. [C.A (COMM.IPD-TM) 7/2024, I.A. 1990/2024 – Stay & I.A. 1991/2024 – Exp]