“TRADEMARK” AFTER CANCELLATION or REGISTRATION OF “DESIGN”:SUPER SMELTERS LIMITED AND ORS. V. SRMB SRIJAN PRIVATE LIMITED

SUPER SMELTERS LIMITED AND ORS. V. SRMB SRIJAN PRIVATE LIMITED: 2020 (81) PTC101(CAL).

Click here for judgment 

In this case, the Calcutta High Court dealt with the issue of whether we can grant protection for any product as a trademark when after cancellation or registration of the design registration subsisted in the same.

BACKGROUND

The respondents are SRMB Srijan Pvt. Ltd., which carries the business of manufacturing and selling TMT bars, wires, grills and so forth since 2001. It produces certain solid strengthening TMT bars, which have a distinct surface-design with the letter ‘X’ emblazoned at regular intervals over the whole surface and length of the TMT bars. The respondent had applied for design registration in regard to the ‘X’ ribbed marks on its TMT bars and had made sure about the equivalent on April 4, 2003, with the, said mark bearing Design No. 191774. Nonetheless, the said Design No. 191774 was later tried to be dropped at the command of Tribeni Industries Pvt. Ltd. prior to the Designs Office, and by a request dated February 3, 2010, the said design was dropped due to prior publication. Post such a request, the respondent documented an application before the Trademarks Registry on February 8, 2016, bearing no. 3406258 for registration of the same ‘X’ ribbed patterns on its TMT bars. An objection was raised by the Registrar of trademarks by a letter dated December 27, 2016, questioning the registrability of the said mark under area 3(A) of the Trademarks Act, 1999 due to exclusivity of the shape of the goods which results from the nature of the products themselves.

The appellants are also occupied with assembling, selling, and circulating TMT bars. The appellant’s trade and manufactured what is known as the ‘Super Shakti’ TMT bar which has a ‘twofold Y’ ribbed pattern. The appellants claim to have been manufacturing and selling TMT bars with the said design since 2016, preceding that they had been utilizing a circular helix design on their TMT bars. The appellants had applied for registration of a line drawing of the ‘twofold Y’ ribbed pattern in regard to TMT rods, bars, and angles on December 31, 2016 under application no. 3447330 in Class 6 and got registration of the same, with Registration Certificate for the appellants’ trademark being given on June 22, 2017. The respondent has recorded an application for correction of the said trademark registration of the appellants before the Intellectual Property Appellate Board Proceedings under the watchful eye of the Learned Single Judge. The respondent initiated a suit, claiming infringement of its unregistered mark, that is the ‘X’ ribbed example on its TMT bars, based on earlier user. The respondent, in the suit, documented an interlocutory application under the learned Single Judge of the Court.

DECISION-

The High Court of Calcutta denied the perception made by Manmohan, J. in the matter of Mohan Lal v. Sona Paint and Hardware[1] wherein it was said that after the Design has lapsed and the monopoly has been appreciated over the same for a very long time as conceded under the statute, the same cannot be applied as a trademark to keep on enjoying the monopoly over the item. The High Court of Calcutta observed that after a design is terminated/cancelled, the same is available to be perceived as a trademark on the off chance that it has become an identifier of the item as the monopoly is not conceded yet simply perceiving the monopoly that as of now existed. The High Court expressed that “The position of Manmohan Singh, J. assumes that an article by ipso facto turning into a design can’t turn into a trademark after it quits being a design on the grounds that the point of a design registration is to concede a monopoly for a limited period and not after that. The Calcutta High Court maintained the choice of the Single Judge to grant temporary injunction for the Respondent, limiting the Appellants from passing off its X ribbed TMT bars. The Court deduced for the situation that there was no compelling reason to meddle with the Single Judge’s judgment as it was not discretionary, impulsive, or unreasonable in any way. While coming to its end result, the Court elucidated the law as for protection of trademarks and designs over shape of articles or items. It called attention to that the functional shape of products cannot be protected as designs or trademarks. Be that as it may, if the shape has elaborate components notwithstanding the functional components, the shape is protectable as trademark just as design. As per the Court, the presence of usefulness in a shape does not deny a state of trademark or design insurance. The inquiry is not whether the capacity is reachable from a shape or a couple of given shapes, however whether the shape has stylish and non-utilitarian components.

An activity for passing off of a trademark might be founded on precedent-based law trademark rights fit as a fiddle of merchandise. Crossing out or expiry of modern design security does not deny the trademark proprietor of trademark rights over his item dependent on shape. At the end of the day, mechanical design and trademark security over shape are autonomous of one another and may coincide with one another. The Court expressed that the X ribbed TMT bars did not lose trademark assurance after abrogation of design registration as the dropping was not identified with the shape and its relationship with usefulness of the bars. At long last, the Court excused the allure by expressing that: “An enrolled design, after its expiry, may not lose its uniqueness and wind up satisfying all the prerequisites of a Trademark. In this situation, not perceiving the said mark as a trademark on account of its all-encompassing imposing business model like that of the design syndication is conflate the two which are free of one another. On the off chance that an individual demonstrates that his mark has achieved all the prerequisite to work as a trademark and qualified for ideal for passing off activity, at that point only the said mark was a design before does not invalidate the very point of trademark law and expand not the reason for design law.

COMMENTS:-

The tragic defect with this presupposition is that as opposed to allowing monopolies to the state of an article, the law of passing off just perceives the presence of a syndication over that shape that is held by the owner. Thus, the syndication of a design, after it reaches a conclusion, is not, ceteris paribus, changed over into the imposing business model of a Trademark however just perceived as one. What Manmohan Singh, J’s. assessment does not represent is the way that an enrolled design, after its expiry, may not lose its uniqueness and wind up satisfying all the prerequisites of a Trademark. In that situation, not perceiving that mark as a Trademark since that would expand the design monopoly is conflate two things that exist totally free of one another. In the event that an individual can show that his imprint has accomplished all the prerequisites of compromise mark in a passing activity, at that point to deny him the insurance that the law entitles him basically in light of the fact that priorly the said mark was a design would invalidate the point of Trademark law and expand not the motivation behind designs law. The dread articulated by Manmohan Singh; J. that designs will not go to the public area as they should post expiry of design registration in the event that they are perceived as Trademarks may be tended to by basically calling attention to that such syndication is limited by the norms needed to be fulfilled for the acknowledgment of a Trademark itself.

CONCLUSION

This is an extraordinary case concerning two mainstays of licensed innovation law-Trademarks and Designs. The essential inquiry that whether a design dismissed for registration can be considered as a Trademark was settled by the court. The cover between the rules was explained by building up that the privileges of earlier client, who has set up uniqueness, should be secured regardless of whether they do not claim the design or the Trademark. It should be noticed that regardless of whether a design was denied registration, or the registration was dropped, it does not reason that the item is not particular. Additionally, it does not strip a client of such design or Trademark from practicing their licensed innovation rights if they have utilized it constantly, broadly, and generally. As talked about above, because couple of arrangements of the two rules are covering in nature does not deny the way that the two statutes work freely of one another. Definitively, the choice fills in as a point of reference for courts while choosing situations were various arrangements of statutes conflict.

[1] AIR 2013 Del 143 (FB)

Leave a Comment

Scroll to Top