Delhi HC Clears Mankind Prime Labs' CROSSRELIEF Trademark for Registration

Justice Saurabh Banerjee, presiding over the matter, allowed the appeal and directed the Registrar of Trade Marks to process Mankind’s application (No. 4804262) for registration of the wordmark CROSSRELIEF under Class 5, which pertains to pharmaceutical and medicinal products.

Mankind Prime Labs had filed for registration of the mark "CROSSRELIEF" on January 2, 2021 on a 'proposed to be used' basis. However, the Trade Marks Registry raised objections, stating that the mark was "identical with or similar to earlier marks in respect of identical or similar description of goods" and hence “likely to cause confusion on the part of the public”.

On October 17, 2023, the Examiner of Trade Marks passed an order refusing the registration. The court cited the Examiner’s order, which read:

“The mark taken in its entirety is significantly identical with and/or deceptively similar to the cited marks. Also the goods/services in respect of which the applicant is seeking registration are the goods/services of same description as those of the cited marks… it is concluded that applied mark is not registrable… Hence application no 4804262 cannot be accepted and refused accordingly.”

Aggrieved by this decision, the appellant approached the High Court under Section 91 of the Trade Marks Act.

Rejecting the Examiner’s rationale, the Court clarified that the mark "CROSSRELIEF" was a coined term, combining "CROSS" and "RELIEF", and cannot be dissected or read in parts. The Court observed;

“The mark ‘CROSSRELIEF’ of the appellant is admittedly a composite singular mark, it has to be taken/read as a whole. Also, the said mark is not a colloquial term and does not appear in the Dictionary... it is completely an arbitrary, fanciful term coined by the appellant.”

Quoting precedent, the Court noted;

"The word 'Dropovit' being an invented word was entitled to be registered as a trade mark…," citing F. Hoffmann-La Roche & Co. Ltd. v. Geoffrey Manners & Co. Pvt. Ltd.

Further, it upheld the principle of anti-dissection, quoting;

“A mark cannot be dissected into its individual parts while examining its entitlement to registration… the principle would apply, mutatis mutandis, even at the stage when the mark is examined…” from Ticona Polymers, Inc. v. Registrar of Trade Marks.

Quoting J.R. Kapoor v. Micronix India and Indo-pharma Pharmaceuticals Works Ltd. v. Citadel Fine Pharmaceuticals Ltd., the Court also emphasized that ‘CROSS’ is generic in the medical industry, much like other common terms;

“The term 'CROSS', being descriptive of the medical aid in the pharmaceutical industry, is generic in nature and also publici juris, over which no one can claim monopoly…”

Importantly, the Court held that CROSSRELIEF, when viewed as a whole, was phonetically, visually, and structurally distinct from previously cited marks, stating;

“If the mark 'CROSSRELIEF' of the appellant is allowed to proceed for registration, there is hardly any cause for it to create any confusion amongst the members of the trade, much less, the consumers/ general public at large.”

In its final order, the Court ruled;

“Accordingly, the appeal is allowed and the impugned order dated 17.10.2023… is set aside. Resultantly, the mark 'CROSSRELIEF' applied for registration vide trademark application no. 4804262 by the appellant is liable to proceed for registration.”

The Court, however, clarified;

“The registration of the composite mark ‘CROSSRELIEF’ shall not confer any exclusive right over any individual component/ part of the mark i.e., ‘CROSS’ or ‘RELIEF’ upon the appellant.”

The judgment has been directed to be sent to the Registrar of Trade Marks for compliance.

To view the original order, click on the link below:

https://indiankanoon.org/doc/166520511/