16 May 2017

Use of a descriptive of services as trademark eligible for IP protection

The plaintiff was the proprietor of the registered label marks comprising the word “Darzi” and was using the same for providing tailoring services. The defendants on the other hand were using the mark “Darzi on call” also for tailoring services.  They argued that the name was generic and the plaintiffs could not claim any exclusivity in respect of any part of the label mark. Also, the label mark was registered under class of textiles which was not the business of the plaintiff.

It was held that although the word “Darzi” in Urdu means tailor, said word is not descriptive as the said word was never been used in the territory of Delhi for depicting tailoring services. It was used in the course of speaking to indicate the profession. Also, since the defendants also sought registration of the mark using Darzi they could not advance a plea that it was generic.

An interesting observation by the Court to the defendant’s contention that there were other people using Darzi as part of their trading name and the plaintiff had not objected to the same, was that the plaintiff is not expected to go after each and every person who may infringe. As between the plaintiff and the defendant, there was no doubt that the adoption by the defendant was dishonest and its use of the mark was likely to confuse customers.

Thus, the Court in its Judgement dated 19-4-2017 in Sunil Mittal v. Darzi on Call, held that a distinction was to be carved between use of a word as descriptive of services provided under a trade name / trade mark and use of that word as trade name / trade mark in itself and granted an interim injunction in favour of the plaintiffs and against the defendants. 


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