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The issue which falls for consideration is the interpretation of the

provisions of Section 9(1)(b) of the Trade Mark Act, 1999 as to whether the said
provision prohibits the registration of the trade mark which are in the
nature of geographical names in generality or whether by way of change in the
language of the provision of Section 9(1)(b) restricts the applicability of the provision
relating to absolute ground for refusal only relating to the marks or indication which may
serve in trade to designate the geographical origin of the goods.

For the sake of comparison of the two provisions, Section 9(1)(b) of the Trade and
Merchandize Mark Act, 1958 and corresponding provision
in Section 9(1)(b) of Trade Mark Act, 1999 are reproduced hereinafter:

Section 9:

Requisites for registration in Parts A and B of the register.

(1) A trade mark shall not be registered in Part A of the register unless it contains
or consists of at least one of the following essential particulars, namely:—

(a) the name of a company, individual or firm represented in a special or particular


manner;

(b) the signature of the applicant for registration or some predecessor in his
business;

(c) one or more invented words;

(d) one or more words having no direct reference to the character or quality of the
goods and not being, according to its ordinary signification, a geographical
name or a surname or a personal name or any common abbreviation thereof
or the name of a sect, caste or tribe in India;

(2) A name, signature or word, other than such as fall within the descriptions in
clauses (a), (b), (c) and (d) of sub-section (1), shall not be registrable in part A of the
register except upon evidence of its distinctiveness.

95. Section 9((1)(b) of the of the Trade and Merchandize Mark Act, 1958, which is
reproduced as under:
(b) which consist exclusively of marks or indications which may serve in trade to
designate the kind, quality, quantity, intended purpose, values, geographical origin or
the time of production of the goods or rendering of the service or other
characteristics of the goods or service;

96. From the reading of both the provisions together, it is clear that under the
provisions of Section 9(1)(b) of the Trade & Merchandize Mark Act, 1958, a trade mark
was not allowed to register in Part A if it contains any geographical name. As against the
same, the provisions of the amended Act, 1999 reads that a trade mark shall not be
registered if it consists exclusively of marks or indications which may serve in trade to
designate the kind, quality, geographical origin of the goods. Therefore, it is clear that
the Trade Mark Act of 1999 has structurally altered the provision of Section 9 including
its wordings with respect to registrability of the geographical names. Whereas on the plain
reading of Section 9(1)(b) of the trade & Merchandize Mark Act, 1958, it can be seen that
what were prevented from registration were the trade marks containing geographical
names as against the same, the reading of the
provision of Section 9(1)(b) of the Trade Marks Act, 1999 suggests that the prohibition
with respect to registrability is now attracted only in relation to marks or indications which
may serve in trade to designate the geographical origin of the goods.

97. In simple and plain words, what was earlier prohibited from registration is
the trade mark containing a geographical name per se however, there exists a
comparative shift in the approach and now what are prohibited under
the Trade Marks Act is the marks or indications which may designate the geographical
origin of the goods. This departure from prohibiting the geographical name per se in the
earlier Act to preventing only those marks which qualify the goods-place association test
is in accord with the change in approach with which the Trade Marks were registered
internationally. This shift in approach is not followed merely in India but also in US, UK
and other common law countries. However, this goods-place association test requirement
is not merely required to be satisfied in presenti but also the assessment is left for the
future ability of the geographical name or indication which may serve as a geographical
origin of the goods as we shall see in our discussion below.

98. If once sees the provision of Section 9(1)(b) of the Trade Marks Act, 1999,
relating to absolute grant for refusal, it is clear that the said provision is in consonance
with Article 3 of EU directive No. 89/104/EEC and also Section 3 of UK Trade Marks Act,
1994 both of the provisions which are similar in language
99. The provisions relating to the EEC directive of Article 3(1)(c) has been interpreted
by the European Court of Justice in the case of Windsurfing Chiemsee Produktions - und
Vertriebs GmbH (WSC) v. Boots-und Segelzubehör Walter Huber & Franz
Attenberger, (2000) Ch. 523 (westlaw report) which has been relied upon by the
respondent in the present case wherein the ECJ made certain significant findings in its
judgment relating to prohibition concerning the registration of geographical name. The
crux of the said findings can be summarized as under:

(a) Article 3(1)(c) which is in consonance


with Section 9(1)(b) of the Trade Marks Act, 1999 (with certain words here and
there, however, the operative part remaining the same) is aimed at serving a public
interest that the descriptive signs or indications relating to
categories of goods of services in respect of which the registration is applied may
be freely used by all and cannot be reserved for one undertaking alone. (Kindly
see para 25 of the report)

(b) With respect to signs or indications which may designate geographical


origin of category of goods in respect of which the registration is applied for, the
ECJ holds that the geographical names of such nature may be available in public
interest as associating the goods with that place leads to favourable
response of the consumer. (Kindly see para 26 of the report)

(c) The applicability of Article 3(1)(c) of the directive which is in almost parimateria
with Section (9)(1)(b) of the Trade Marks Act, 1999 is not merely confined
to registration of geographical name as a trade marks solely where they
designated a specific geographical locations which are already famous or
known for particular category of goods concerned and has already associated with
the minds of the relevant class of persons including trade and average consumer
but it is also applicable in the cases where such association is likely to be possible
or where the mark is susceptible to be designating the geographical origin of the
goods in the future and such connection can be established in future also. The
ECJ placed reliance to the language of Article 3(1)(c) of EC directive which states
‘indications, which may serve to designate…. Geographical origin’. It is due to the
usage of the wordings ‘may serve to designate’ clearly makes the provisions
applicable to geographical names which are likely to attain
association of geographical origin of the goods in the future as well as against the
one which are already known. (Kindly see paras 29, 30 and 31 of the report.)
(d) With respect to the mark's/geographical name's ability/capability to attain such an
association in the minds of the public in future, the ECJ has held that the
competent authority shall test the said geographical name by taking various
variables into account including the degree of familiarity amongst such persons
with that name, with the characteristic of the place designated by the name and
with the category of the goods concerned. Therefore, the assessment of future
association of the geographical name with the origin of the goods has to be tested
by inquiring as to how familiar the said name is amongst the consumer
and trade what are the characteristic of the said place designated by the name and
whether the said place has got any association with the category of goods
concerned or not and whether it is probable on account of taking into the said
variables into consideration any such association, in future. All these variables can
be taken into account on the existence of evidence available on record. (Kindly
see para 31 and 32 of the report.)

(e) Article 3(1)(c) doesn't prohibit, in principle, the geographical names which are
unknown to the relevant class of persons or unknown to the designation of the
geographical location and are unlikely to be believed that the category of goods
concerned originate from there. (Kindly see para 33 of the report)

(f) The connection of geographical location viz a viz the category of goods is not solely
dependent on the basis that the goods are manufactured there. The said
connection could be based upon “other ties” like the goods were conceived there
and/or designed in the geographical location and natural and other ties which
allows the public in general and trade to associate the goods with the geographical
origin of that place including familiarity of the place with certain category of goods
etc. Therefore, whether the goods are actually manufactured there or not is not
conclusive of the fact whether such geographical location can be registered as
a trade mark or not as there are other ties which the goods may have with that
location. (Kindly see para 36 of the report)

(g) Where the geographical name is already familiar as an indication of geographical


origin in relation to certain category of goods, the requirement of furnishing the
user has to be both long standing as well as intensive in order to meet the
requirement of distinctive character (Kindly see para 50 of the report).

(h) In assessing the distinctive character of the trade mark in respect of which
the registration has been applied for, the account may be also be taken into
consideration as to the market share held by the mark, how intensive the said
market share is, geographically widespread and long standing
user of the trade mark, the amount invested by the undertaking in promoting the
mark, the proportion of relevant class of persons who identify the goods originating
from particular undertaking because of the mark,
statement of Chamber of Commerce and Industry, etc. If on the basis of all these
factors, the competent authority finds that the relevant class of persons for atleast
significant proportion identifies goods as originating from particular undertaking
because of the trade mark, then it must be held that the
requirement for establishing the distinctive character stands satisfied. (Kind see
para 51 and 52 of the report).

100. The above are the guidelines given by ECJ when the issue with respect
to registration of trade mark containing geographical name which is acting as an
indication of geographical origin or is capable of acting as an geographical origin
falls for consideration before the competent authority including the Court or Tribunal. The
said guidelines have been followed by the UK Courts and are also consistent with the
amendments carried out in the relevant laws including the law in India and also on the
interpretation of the plain reading of the Act.