The present case concerns the dispute between Khadi and Village Industries Commission (KVIC) and the Registrar of Trade Marks over the rejection of KVIC’s application for registration of a device mark in Class 2 under Section 9(1)(b) of the Trade Marks Act, 1999. The dispute arose when KVIC, a statutory body established under an Act of Parliament and engaged in promoting Khadi and village industries, sought to register its mark for anti-fungal, anti-bacterial paints under the brand “Vedic Paint.” The paint, developed by Kumarappa National Handmade Paper Institute, was launched in 2021 and claimed to be an innovative product made primarily from cow dung. KVIC had already obtained registration for the word mark “KHADI PRAKRITIK PAINT” in Class 2, but the Registrar refused its application for the device mark.
KVIC argued that its trademark had already been declared a well-known mark by the Delhi High Court and included in the list of well-known trademarks maintained by the Trade Marks Registry in 2022. It submitted that the refusal of the device mark was erroneous as the Registrar failed to consider the mark as a whole. KVIC contended that under the Supreme Court ruling in Registrar of Trade Marks v. Ashok Chandra Rakhit Ltd., a device mark must be evaluated in its entirety, rather than by analysing its individual components. KVIC also relied on the Delhi High Court’s decision in Khadi and Village Industries Commission v. JBMR Enterprises, where it was granted an injunction against unauthorised use of the mark.
The Registrar of Trade Marks defended the rejection, arguing that the mark consisted of descriptive elements such as the words “Prakritik” (meaning natural) and “paint,” which were non-distinctive and directly indicated the nature of the goods. The Registrar also contended that KVIC had not provided sufficient commercial evidence to establish prior use, alleging that no invoices or sales records accompanied its affidavit of use.
The High Court, after reviewing the evidence and arguments, ruled in favor of KVIC. The court emphasized that a device mark should be considered as a whole and that individual descriptive elements do not automatically render a mark ineligible for registration. It cited the Delhi High Court’s ruling in Abu Dhabi Global Market v. Registrar of Trade Marks, Delhi, which held that composite marks, even if containing descriptive elements, are not per se excluded under Section 9(1)(b) of the Act. Furthermore, the court rejected the Registrar’s finding that KVIC had not demonstrated prior use, noting that promotional activities and social media presence could suffice as evidence of use, as per the precedent set in Consolidated Foods Corporation v. Brandon and Company Private Limited.
The judgment also highlighted the inconsistency in the Registrar’s approach, pointing out that KVIC had been granted registration for a similar device mark under Class 2 previously. The court found that the refusal to register the present device mark was arbitrary and unjustified, especially given the prior recognition of the “KHADI PRAKRITIK PAINT” word mark.
In its final ruling, the Bombay High Court set aside the Registrar’s order and directed the application for KVIC’s device mark to proceed for registration. The court reaffirmed the principle that trademark applications should be assessed holistically, and that prior well-known status and market presence must be considered in such determinations. This judgment highlights the evolving approach to trademark law in India, particularly concerning the protection of well-known marks and composite device trademarks.
