The Intellectual Property Appellate Board (‘IPAB’) has allowed two appeals[1] vide Orders dated August 7, 2020 filed by Hindustan Unilever Limited (‘Appellant’) against orders passed by the Senior Examiner of the Trademarks Registry, Mumbai (‘Respondent’), wherein the Appellant’s trademarks, ‘GLOW & LOVELY’[2] and ‘GLOW & HANDSOME’[3] had been refused trademark registration under classes 3 and 5. Since the parties, facts, and ratio of the IPAB were the same in both cases, this article will discuss the two cases collectively.
Fair & Lovely – The brand
The Appellant is one of the largest FMCG companies and is engaged in the manufacture of products including foods, beverages, personal care products, etc. It had introduced a range of products under the ‘FAIR & LOVELY’ brand including fairness creams, anti-mark creams, and winter creams. Along with its parent company, Unilever Plc, the Appellant had coined and adopted several combination of marks which had successfully been accepted and registered in the trademark register.
The registered marks owned by the Appellant included marks such as ‘FAIR & LOVELY’ as well as numerous formative marks with the prefix/suffix GLOW/LOVELY. The trademark office had allowed the registration of the Appellant’s marks wherein some had been registered without any conditions, such ‘FAIR & LOVELY’, ‘FAIR & LOVELY – MAX FAIRNESS’, and ‘FAIR & LOVELY – ALMOND GOLD’, and others had been registered with conditions whereby the Appellant had no exclusive rights over the specific words but was granted the right to use the mark in totality in relation to its goods viz., ‘FAIR & LOVELY – YOUTH GLOW’ and ‘PEARS REFRESHED GLOW’; here, the Appellant had no exclusive rights over the words ‘GLOW’ or ‘REFRESHED GLOW.’
Glow & Lovely / Glow & Handsome
The Appellant had applied for trademark registration for its two marks, ‘GLOW & LOVELY’ vide Application No. 3938924, and ‘GLOW & HANDSOME’ vide Application No. 3938925, under classes 3 and 5. With respect to the mark, ‘GLOW & LOVELY,’ a show cause hearing was fixed on July 25, 2019, September 9, 2019, and October 14, 2019, and despite the arguments and documents submitted by the Appellant, the Respondent passed a refusal order on October 14, 2019. Similarly, with respect to the mark, ‘GLOW & HANDSOME,’ a show cause hearing had been fixed on July 25, 2019, and the Respondent passed a refusal order on July 26, 2019.
In both cases, the Respondent’s refusal order had failed to provide any detailed grounds for the refusal of the Appellant’s marks, but for the statement of rejection under Section 9(1) of the Trade Marks Act, 1999 (‘the Act’), as per which it was found that the trade mark was devoid of any distinctive character and was thus rejected. The Appellant subsequently filed TM-M to obtain the statement of grounds of the Respondent’s decision under Rule 36(1) of the Trade Marks Rules, 2017. Yet again, the Respondent did not provide any detailed reasoning for the refusal of the mark, causing the Appellant to file a review petition.
The Appellant thereafter received a hearing notice which stated that a hearing for the review petitions had been fixed for February 18, 2020; to review the refusal orders passed for both marks, ‘GLOW & LOVELY’ and ‘GLOW & HANDSOME.’ At the time of hearing and thereafter, there were no orders passed or communicated to the agents/advocates of the Appellant. However, the agents/advocates of the Appellant later found out that the impugned orders had been uploaded on the Trade Marks Office’s website, wherein the review petitions were refused and the objections in the Respondent’s orders had been sustained, albeit without reasons. Aggrieved by the said orders, the Appellant approached the IPAB by way of an appeal under Section 91 of the Act.
Arguments considered by the IPAB
The Appellant in their submissions, in response to the Respondent’s objections in the examination reports under Section 9(1)(a) of the Act, stated that its marks ‘GLOW & LOVELY’ and ‘GLOW & HANDSOME’ had been uniquely adopted, that the composite marks had no dictionary meaning, and that there was nothing in common parlance referred to as ‘GLOW & LOVELY’ or ‘GLOW AND HANDSOME.’ The Appellants also referred to precedents to indicate that the nature of the marks had no direct reference to the character and purpose of the goods under the mark. The Respondent nonetheless refused to grant trademark registration.
The Appellant submitted before the IPAB that the Respondent was bound by Section 18(5) of the Act, to record in writing, the reasons and grounds for refusal or conditional acceptance, which was thereafter to be sent to the Appellant within two (2) weeks of the order. The Appellant also relied on the Supreme Court of India’s decision in Siemens Engineering & Manufacturing Co. v. Union of India,[4] wherein the court stated that it was settled law that where an authority had made an order in exercise of its quasi-judicial function, it was mandatory that it recorded the reasons, supporting the order it had made.
The IPAB observed that the Respondent had not taken into account the submissions made in response to the examination reports, submissions presented at the time of the hearing, and the documents submitted in support of the applications along with the review petitions. The IPAB also noted that the several registrations obtained by the Appellant had been ignored and that there was no discussion at all in the impugned orders in this regard.
The IPAB observed that the distinctiveness of the Appellant’s various marks was evident from judicial recognition and statutory protection.[5] The IPAB further observed that the orders passed by the Respondent were single-line, pre-drafted, mechanical or system-based orders and that the Respondent did not delve into the Appellant’s oral/written submissions nor did it refer to the precedents cited. The IPAB reiterated the landmark judgment passed by the Supreme Court of India in Manohar v. State of Maharashtra,[6] and reemphasised the need to record reasons to adhere to the principles of natural justice.
In the aforementioned case, the Supreme Court made some significant remarks such as, the judicial trend, even in administrative decisions by quasi-judicial authorities, was to always record reasons which would operate as a valid restraint on the arbitrary exercise of judicial power; providing reasons would ensure that the decision maker’s discretion was exercised on relevant grounds, the principles of natural justice and due process would be observed, judicial accountability and transparency would be maintained, process of judicial review would be facilitated, and the requirement of recording reasons had now become a vital component of human rights.[7]
Additionally, the IPAB also referred to Namit Sharma v. Union of India,[8] wherein the court laid down that reasoning was the soul of a judgment and that it embodied the three pillars upon which natural justice was founded. The IPAB considered the order in IPAA v. The Controller General of Patents, Designs & Trademarks & Anr,[9] wherein the High Court of Delhi held that the Registrar of Trade Marks was duty bound to send a copy of the order passed under Section 18(5) of the Act, listing the grounds for refusal or conditional acceptance as well as the material used in having arrived at the decision. Rule 36 of the Trade Marks Rules, 2017, was found to be arbitrary and inconsistent with this mandatory provision of the Act; Section 18(5) of the Act would thus prevail over Rule 36.
IPAB’s decision
The IPAB found that despite these numerous precedents and the above-mentioned order of the High Court of Delhi, the impugned orders passed by the Respondent were in clear violation of the specific directions in the mechanism to be followed while passing orders. The IPAB noted that the Respondent had not appreciated the facts, law, or documents submitted by the Appellant.
Further, the IPAB held that the Respondent failed to take into account that the Appellant’s marks were a unique combination of two common words, which when used together resulted in a composite mark and had a distinct commercial impression. The IPAB also held that the Respondent failed to consider the previously registered trademarks owned by the Appellant with similar combinations.
The IPAB concluded that the Appellant’s marks, ‘GLOW & LOVELY’ and ‘GLOW & HANDSOME’ were inherently distinctive in nature. The IPAB emphasized that the Appellant’s marks were a unique combination of two common English words which when merged together resulted in composite marks yielding different and distinctive commercial impressions, as the words combined by the Appellant had distinct meanings by itself and one did not serve as an adjective to the other and were thus completely unconnected to each other.
The IPAB noted that since the Appellant was agreeable to claim exclusive rights only with respect to the specific combination of the words and not in the words individually, the IPAB found the marks, ‘GLOW & LOVELY’ and ‘GLOW & HANDSOME’ to be distinctive in nature, quashed the impugned orders dated October 14, 2019, and September 17, 2019, and directed the Respondent to advertise the marks at the earliest. The IPAB held that the above was subject to the disclaimers that the Appellant would have the right to the words, ‘GLOW & LOVELY’ and ‘GLOW & HANDSOME,’ when used together.
[1] Hindustan Unilever Limited v. The Registrar of Trademarks, OA/12/2020/TM/MUM, decided on August 7, 2020; Hindustan Unilever Limited v. The Registrar of Trademarks, OA/13/2020/TM/MUM, decided on August. 7, 2020
[2] Application No. 3938924
[3] Application No. 3938925
[4] 1976 A.I.R. SC 1785.
[5] Misc. Petition No. 38 of 1988 filed by the Appellant; IPAB vide order dated Jun.6, 2002 held that ‘FAIR & LOVELY’ cannot be treated as words having a reference to or describing the character or quality of the goods, i.e. cream.
[6] (2012) 13 S.C.C. 14.
[7] Ruiz Torija v. Spain EHRR at 562 para 29.
[8] 2012 (8) S.C.A.L.E. 593.
[9] W.P. (C) 3851/2019 & CM Appls. 17546/2019, 29362/2019.