Determining Distinctiveness Under Section 9(1)(A) TMA 1999 

Let us try Determining Distinctiveness Under Section 9(1)(A) TMA 1999. Under the Trademarks Act, 1999 it is laid down that any person seeking registration of a trademark has the right to register a trademark unless it is disallowed because of any infirmities as defined in Sections 9, 11, and 13 of the Act. In the recent case of Agatha Christie Limited vs. Registrar of Trademarks^[1], the High Court of Delhi settled a dispute based on a rather unusual aspect of a trademark i.e., its distinctiveness.

Distinctiveness Under Section 9(1)(A) TMA 1999

Widely known crime fiction novel “And Then There Were None” had to face the short end of the stick as its application for registering the title as a trademark was dismissed by the deputy registrar of trademarks.  Special emphasis was given by the appellant on the fact that the title “And Then There Were None” was not even remotely similar to any marks in use.  

The application filed by the plaintiff discloses that registration was sought for the title under classes 9, 16 and 41 i.e. pre-recorded media, printed matter and educational and entertainment and various other categories related to these heads. Lacking a prima facie infirmity, the deputy of registrar revealed that the reasons behind his disapproval were the following characteristics of the applied mark, 

• The marked lacked the intent to be used as  a trademark  
• Lack of evidence that the mark had ever been used as a trademark  
• Lack of distinctiveness  

After the arguments, the decision delivered by the bench was mainly based on the objection of distinctiveness presented by the defendant. Section 9(1)(a)⁶ lays down that registration of a mark can be subjected to refusal when: 

The mark is devoid of any distinctive character, meaning that it is not capable of distinguishing the goods or services of one person from those of another. In the present case, the Hon’ble judge defined the limited scope of section 9, 11 and 13 by stating that registration of trademarks is not a mandate but a right provided under Article 19(1)(g) of the Constitution of India, and therefore, the provisions which opt to detract that right are exhaustive.

The scope of these provisions should not be widened and any decision not to allow registration of a mark has, therefore, should be with reasons apparent on the face of the decision. Concerning the title not being distinct enough, he added that the perspective of the deputy was beyond his understanding as all requirements for the applied mark to be ‘distinct’ were met. It is thus observed that by interpreting the provisions for dismissal to be exhaustive, the discretion of the authorities in trademark infringement has now been coupled with the burden of providing sufficient justification to the bench.  

^[1] MANU/DE/3487/2021 

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