The Intellectual Property Appellate Board (‘IPAB’) recently allowed registration of a mark observing that the Registrar had failed to take into account the arbitrary nature of the subject mark, failed to account for the extensive and continuous use of the subject mark and of its reputation and goodwill, etc.
In The Halal Guys, Inc. v. The Registrar of Trademarks,[1] The Halal Guys Inc. (‘Appellant’) had approached the IPAB assailing an order passed by the Registrar of Trademarks (‘Respondent’), wherein the Respondent had rejected the Appellant’s subject mark, which depicted the Appellant’s popularity by virtue of customers lined up around the stalls of the Appellant (‘subject mark’). The Appellant had applied for trademark registration of the subject mark vide Application No. IRDI. 4201793 under Class 43, through the Madrid Application and designated India.
The Halal Guys, Inc.
The Appellant began its unique halal food cart in New York City in 1990, to cater to the increasing public demand for halal meat. The cart operated under the name ‘THE HALAL GUYS’ since November 2000; following its inaugural food cart, the Appellant opened over eighty-five (85) stores or franchised locations across the globe, received the Multicultural Award in 2014 for the promotion of diversity, inclusivity, and multiculturalism in the United States, earned a strong reputation via advertisements across traditional and digital media, and maintained an active online presence.
The subject mark represented the long queues seen next to the Appellant’s cart and was a unique visual representation of the association and popularity of the Appellant. The subject mark was granted registration in numerous countries including the United States, Canada, Australia, Malaysia, and through the World Intellectual Property Organisation (WIPO).
In India, on examination of the Appellant’s application, the Respondent issued an examination report on August 22, 2019, wherein it objected to the subject mark under Section 9(1)(b) of the Trade Marks Act, 1999 (‘the Act’), stating that the subject mark consisted of indications that would serve in trade to designate the purpose or other characteristics of the goods or services.
Refusal Order
In response to the Respondent’s provisional refusal, on September 26, 2019, the Appellant submitted that the subject mark was arbitrary in respect of the goods covered in its application, it was distinctive, that the subject mark was a composite mark which contained visual aspects that were original and copyrighted, and that the subject mark had no dictionary meaning or trade significance but for being the Appellant’s trademark.
Additionally, the Appellant supported its submission with an Affidavit of Use. It further relied on Caterpillar v. Mehtab Ahmed,[2] wherein it was held that where a mark was either invented, fanciful, arbitrary or suggestive, it is to be treated as a prima facie distinctive mark and capable of registration.
Pursuant to the Appellant’s response to the examination report, a show cause hearing took place on February 24, 2020, wherein the Appellant reiterated its arguments. The hearing officer did not pass an order immediately but the Appellant later learnt via the online records of the Trade Marks Office that its application had been refused under Sections 9(1)(a) and (b) of the Act vide Order dated March 3, 2020. The Appellant received confirmation of the refusal order from the International Bureau on March 17, 2020, causing the Appellant to appeal to the IPAB.
IPAB’s decision
The IPAB concurred with the Appellant’s contentions that the Respondent had failed to take into account the arbitrary nature of the subject mark, failed to account for the extensive and continuous use of the subject mark and of its reputation and goodwill, ignored the Appellant’s detailed Affidavit of Use, did not take the Appellant’s trademark registration of the subject mark in other jurisdictions or copyright protection over the subject mark into consideration, and lastly, overlooked the Caterpillar[3] precedent. The IPAB held that the subject mark was a unique visual representation that had been adopted by the Appellant to depict its vast popularity. The IPAB noted that the significance of the subject mark was that it carried a singular association to the Appellant, who also held copyright protection in the subject mark on account of the same being a creative, artistic expression.
Furthermore, the IPAB proclaimed that it was unable to comprehend the manner in which the subject mark could have been refused under Section 9 of the Act had the relevant definitions of the Act viz., Sections 2(m), 2(z), 2(zb), 2(zg), and Section 2(2)(b) and (c), been interpreted accurately. The IPAB concluded that the Respondent failed to apply its mind to the matter and thus set aside the impugned order and directed the Respondent to advertise the subject mark.
[1] OA/10/2020/TM/MUM, decided on Aug. 7, 2020.
[2] 2002 C.T.M.R. 345.
[3] Id.