Delhi High Court: In a case wherein, Fluke Corporation, the appellant had filed an appeal under Section 91(1) of Trade Marks Act, 1999 (‘the Act') to challenge the order dated 10-12-2018 passed by the Registrar of Trade Marks, in which the appellant's trade mark application for the mark ‘DATAPAQ' was rejected under Section 9(1)(b) of the Act on the ground that it was descriptive of the goods and services, Pratibha M. Singh, J.*, opined that the appellant's mark ‘DATAPAQ' was consistent with the series of marks that were used by the appellant and was to be advertised in the trade mark journal by the Registrar of Trade Mark within a period of two months.
The appellant was a company established in 1948 and was stated to be a global leader in compact electronic test tools. One of its divisions, Fluke Process Instruments, specialized in designing and manufacturing infrared temperature measurement solutions for industrial applications. The division’s products were distributed globally under brands Raytek, Ircon, and DATAPAQ, which aimed to provide crucial temperature measurement and analysis systems for manufacturing processes involving ovens, kilns, and furnaces.
On 4-07-2022, a statement was made on behalf of the appellant that it was willing to restrict the mark ‘DATAPAQ' for certain goods for temperature systems and temperature profiling and accordingly, deleted the three descriptions of goods namely, electronic data logger sensors, thermocouple trays and electronic data loggers.
The appellant was seeking registration of the mark ‘DATAPAQ' as a word mark and the mark was being used as temperature monitoring and temperature profiling software systems. The appellant was also using the mark WICKEDPAQ, MONOPAQ, etc. as a series of marks.
Thereafter, on perusal of the examination report and the search report dated 24-06-2013 showed that there were several other parties, who had registration of the marks consisting of the word ‘DATA' ‘PAQ/PACK'. Such marks included DATA I/O, PACKIT, DATA WORLD, PACK TRACK, PACKTOP, DATA, PACK1, DATA ROBOTICS, DATA XPLOD, PACK POWER, DATA FLO, PACKWIN, DATA RESOLVE TECHNOLOGIES.
Further, it was stated that the only reason given by the Registrar in its order dated 10-12-2018 was that the trade mark was descriptive and hence, the objection under Section 9 of the Act was maintained.Thus, the appellant filed the present appeal to challenge the impugned order.
Analysis, Law, and Decision
The Court noted that on the perusal of the impugned order, it showed that the only objection was that the trade mark was descriptive. Further, the Court relied on Bata India Ltd. v. Chawla Boot House, 2019 SCC OnLine Del 8147 and Disruptive Health Solutions v. Registrar of Trade Marks, 2002 SCC OnLine Del 2002 and opined that the settled legal position was that if the descriptive marks acquired secondary meaning, they could be registered. Thus, the Court opined that the reasoning provided in the impugned order was unsustainable as there was no consideration whether the appellant's mark had acquired secondary meaning or not.
The Court further stated that a perusal of the appeal revealed that the appellant was a US Corporation and had used the mark DATAPAQ since 1985 in various countries. The mark DATAPAQ also had been registered in many countries including the USA. Moreover, the appellant had a number of marks ending with PAQ namely, COILPAQ, WICKETPAQ, MONOPAQ, STENTERPAQ, ROTOPAQ LITE, DATAPAQ AUTOPAQ, DATAPAQ MONOPAQ2. Thus, the mark DATAPAQ was consistent with the series of marks that are used by the appellant.
Thus, considering other pending and registered trade marks on the Register, the Court opined that the appellant's mark ‘DATAPAQ' deserves to be proceeded for advertisement subject to the following conditions:
No exclusivity should be vested in the word ‘DATA' or ‘PACK/PAQ' separately.
The trade mark registration should be confined to the word mark DATAPAQ as a whole.
Subsequently, the Court clarified that the present order would not affect any opposition proceedings filed against appellant's mark and stated that the appellant's mark ‘DATAPAQ' was to be advertised in the trade mark journal by the Registrar of Trade Mark within a period of two months.
Accordingly, the appeal was disposed of.
[Fluke Corporation v. Registrar of Trade Marks, 2023 SCC OnLine Del 5024, decided on 16-08-2023]
Advocates who appeared in this case :
For the Appellant: Pravin Anand and Sandhya Singh, Advocates;
For the Respondent: Harish Vaidyanathan Shankar CGSC; Srish Kumar Mishra, Sagar Mehlawat and Alexander Mathai Paikaday and M Sriram, Advocates;
*Judgment by- Justice Pratibha M. Singh