Words Of Common English Usage Can't Be Registered As Trademark, No Monopoly Can Be Claimed By Anyone: Delhi High Court

The Delhi High Court has recently ruled that words of common English usage cannot be registered as a trademark and no monopoly can be claimed by the registrant of such a mark.

Justice C Hari Shankar said that words of ordinary English usage cannot be monopolised or else, the entire language would be appropriated by a few, which cannot be permitted.

Observing that obtaining a registration in respect of a mark which consists of common English words “is fraught with the possibility of its own adverse sequelae”, the court said:

“Commonly used words, or a non-distinctive combination of commonly used words, cannot be monopolised by any one person, so as to disentitle the rest of the world to the use thereof.”

It added: “There is, therefore, in Section 9(1)(a), an absolute proscription to registration of marks which are inherently lacking in distinctiveness, in that they are incapable of distinguishing the goods or services of one person from those of another. Words of common English usage fall within this category.”

The court was dealing with a trademark infringement suit filed by Institute of Directors, an organization for Company Directors Training Courses and membership.

The suit was filed against an entity which applied for registration of the mark “Directors' Institute” for similar services as provided by the plaintiff.

Institute of Directors submitted which reads “Directors' Institute”. He submits that the use of “Directors' Institute” is bound to result in confusion in the minds of the public, when they would see its mark “Institute of Directors”, especially as both marks were used for providing similar and allied services.

Refusing to grant interim injunction to the plaintiff, Justice Shankar said that the claim of exclusivity over the words “Institute of Directors” and the prayer for a restraint against the defendants' using the words “Directors Institute” cannot, prima facie, sustain.

“Proprietary rights are a sine qua non for a claim to exclusivity to be sustained. Absent proprietary rights over a mark, there can be no exclusivity,” the court said.

Title: INSTITUTE OF DIRECTORS v. WORLDDEVCORP TECHNOLOGY AND BUSINESS SOLUTIONS PVT LTD & ORS.

Citation: 2023 LiveLaw (Del) 1290

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