Case Analysis: BEST Sport & Freizeit GmbH v. Registrar of Trademarks

Case Citation: 2023:MHC:3879

Introduction:

In the case of BEST Sport & Freizeit GmbH v. Registrar of Trademarks, the appellant, BEST Sport & Freizeit GmbH, a German sports goods and equipment company, sought the registration of a device mark bearing registration number 2834287 in Class 28 i.e. “Games and playthings; gymnastic and sporting equipment; gymnastic and sporting articles, in particular footballs, handballs, volleyballs, beach volleyballs, basketballs, American football balls, mini balls, ball pumps, goalkeepers’ gloves, knee and shin protectors, volleyball net sets, basketball baskets, table tennis bats, table tennis games, table tennis net fittings, table tennis balls, table tennis bat covers, tennis rackets, tennis balls, badminton rackets, badminton game fittings, shuttlecocks, badminton nets, badminton net fittings, badminton racket covers, squash rackets, squash balls, squash racket covers, darts, dartboards, chest expanders, small dumb-bells, skipping ropes, boxing gloves, punchbags, dumb-bells, dumb-bell weights, disc dumb-bell sets, weightlifters’ belts”. This case revolves around the rejection of their application for registration based on objections raised by the Registrar of Trademarks under Sections 9(1)(b) and 11(1) of the Trade Marks Act, 1999. The relevant extract of the order is produced herein below:

Procedural History:

The appellant applied for the registration of a device mark in Class 28 on October 29, 2014. The Registrar of Trademarks examined the application and raised objections under Sections 9(1)(b) and 11(1) of the Trade Marks Act, 1999. The objection under Section 9(1)(b) was based on the ground that the mark consisted of words describing the kind, quality, intended purpose, or other characteristics of the goods. The objection under Section 11(1) cited two rival marks in Class 28.

In response to these objections, the appellant asserted that their trademark was in a stylized form and had no reference to the character or quality of the goods. They further argued that the comparison should be made between the marks as a whole and not by splitting them into their constituents. After a hearing, the Registrar issued an order on February 27, 2019, refusing the application under Section 9(1)(b) of the Trade Marks Act. The Appellant filed an appeal against the order of the Respondent at the Madras High Court to set aside the impugned order passed by the Respondent.

Issues Presented:

1. Whether the rejection of the appellant’s trademark application under Section 9(1)(b) of the Trade Marks Act was justified?
2. Whether the appellant’s trademark could proceed to registration subject to limitations or conditions?

Rules of Law:

• Section 9(1)(b) of the Trade Marks Act, 1999: Prohibits the registration of trademarks that consist exclusively of marks that designate the kind, quality, intended purpose, or other characteristics of the goods.
• Section 11(1) of the Trade Marks Act, 1999: Allows the Registrar to object to the registration of a trademark if it is similar to an earlier trademark in the same class.

Contentions of the Appellant:

The appellant argued that their trademark was a composite device mark that should be examined as a whole, and it included the words ‘BEST SPORTING.’ They contended that the mark’s descriptive nature could be addressed by imposing limitations or conditions on the registration, and they were willing to accept such restrictions.

Contentions of the Respondent:

The Registrar of Trademarks argued that the words “BEST SPORTING” were descriptive of the quality of sporting goods and, therefore, the rejection of the application was justified. They relied on legal precedents, including NRI Taxi Service Pvt. Ltd. v. Registrar of Trade Marks[1] and Red Bull AG v. Pepsico India Holdings Pvt. Ltd.[2], to support their position.

Analysis and Reasoning:

The Court considered the nature of the appellant’s mark, which was a composite device mark using colors and stylized letters in addition to the words ‘BEST SPORTING.’ It was emphasized that composite marks should be evaluated as a whole and not by isolating individual elements. Additionally, Section 18(4) of the Trade Marks Act allows the Registrar to impose conditions or limitations on trademark registrations.

The Court also took into account that the appellant’s corporate name contained the words ‘BEST SPORT,’ and evidence of registrations for the identical device mark in multiple jurisdictions was provided. Based on these considerations, the Court found that the impugned order and the grounds of the decision were not tenable.

Holding and Decision:

The Court set aside the impugned order and the grounds of the decision. It ruled that the evidence on record justified the application proceeding to the advertisement, subject to the inclusion of a condition or limitation that prevented any exclusive right over the individual words ‘BEST’ or ‘SPORTING.’ However, this decision would not be binding on potential opponents following the mark’s advertisement.

Implications and Significance:

This case underscores the importance of considering composite device marks as a whole rather than isolating individual elements. It also highlights the Registrar’s authority to impose limitations or conditions on trademark registrations to address concerns about descriptiveness. This decision provides clarity on the registration of trademarks containing descriptive words in composite marks.

Conclusion:

The judgment in BEST Sport & Freizeit GmbH v. Registrar of Trademarks sets a precedent for the evaluation of composite device marks, emphasizing the importance of considering them as integrated wholes. It also reaffirms the Registrar’s authority to impose limitations or conditions on trademark registrations to balance the interests of trademark owners and the public.

[1] 2023 SCC Online Delhi 356

[2] 2022 SCC Online Delhi 969