The standards in case of a "word mark" often come
under contention, specifically in cases where words may assume
multiple and diverse meanings. The word being laudatory or not,
is often another ground that is vouched. The case of ITC
Limited v. GTC Industries Ltd. & Ors. 2008 (37) PTC
321 reiterates and reinstates these very aspects.
Opposing the order passed by the Deputy Registrar of
Trademarks, dealing with an opposition filed to GTC's
application for a trademark, ITC Ltd. approached the
Intellectual Property Appellate Board (IPAB). The matter lay
forth the IPAB in pursuance to the High Court transferring the
matter to the present forum.
GTC's application dealt with the mark
"VENTURE" in respect to cigarettes, tobacco, safety
matches, smoker's articles etc. as under Class 34 of
the Schedule appended to the Trade Marks Act, 1958. The mark
was opposed to by ITC on the ground that the mark did not
qualify as inherently distinctive nor was it capable of
distinguishing the goods in which GTC was dealing, but in fact
may be connected in the course of trade falling under the
purview of S.9 of the 1958 Act. The opposition filed by ITC was
dismissed and GTC was allowed to proceed to registration.
ITC vouched before the Board of its highly recognized and
reputed stand in the Tobacco sector. They also averred that the
Deputy Registrar in disallowing the opposition had erred in law
and facts. They stated that the mark could not be considered as
adapted to distinguish and lacked inherent distinctiveness. The
onus of showing such distinctiveness lay on GTC and that the
Deputy Registrar had failed to acknowledge this. They also
averred that GTC had failed to prove extensive use of the mark
and that their mark solely associated with their mark. ITC
contended that the mark was a common word in the English
language is not distinctive and does not possess a secondary
meaning. They also stated that such words were often used as
laudatory and hence cannot be used as a trademark. They cited a
plethora of cases and instances, while looking at various
dictionary meanings and stated that GTC had failed to
appreciate these. Amongst these, they also referred to an
earlier suit between the two, ITC Ltd. v. G.T.C. Industries
Ltd. & Anr. 2002(25) PTC 341 (Bom)
To these, GTC rebutted stating that the appeal was
inadmissible since the appeal had been filed under S. 108 of
the Act, while the same should have been filed as under S.
91(1) and 91(2) of the 1999 Act. They also defended themselves
stating that the Registrar had decided the matter as under the
well-settled principles of law and that the mark was not in
contravention of the provisions of Section 9 of the Trade Marks
Act, 1958. They also stated that the word "VENTURE"
was not laudatory in as much as it is not an adjective, and is
used as a noun or a verb. With respect to the earlier decision
that was cited by ITC, they stated the same to be
The Board stated that the main issue that required
consideration was whether the Deputy Registrar had rightfully
allowed registration of the mark. The etymology and dictionary
meanings were taken into consideration. The court opined that
keeping in mind the nature of the goods, the word was
descriptive of the products, in as much as one of the meanings
appended to it was "to take a risk". They also opined
that the word venture being used in terms of business and
commercial interest should not be granted monopoly on. As
regards the applicability of S. 91 of the Trade Marks Act,
1999, it was stated that the Act having come to force much
after the appeal had been filed, became inapplicable to the
case. The Board allowed the appeal in favour of ITC and set
aside the order of the Deputy Registrar.
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