Thursday, December 21, 2006

Registrar Refuses 'Rare Blend' Application [India]

Under the World Trade Organization Agreement on Trade-Related Aspects of Intellectual Property Rights wines and spirits are categorized separately and enjoy a higher level of protection than other products. Scotch is a well-known type of whisky and the Scotch Whisky Association, which is responsible for protecting Scotch whisky, registers the product worldwide. The association is vigilant in safeguarding and protecting the interests of its members, and has successfully challenged the registration of a number of brands worldwide, including in India.


In Srilab Breweries Pvt Ltd v Scotch Whisky Association (2006 (33) PTC 527 (Reg)) Srilab Breweries Pvt Ltd filed an application to register the mark RARE BLEND with the Trademarks Registry. The Scotch Whisky Association filed an opposition on the grounds that the term 'rare blend' is devoid of any distinctive character and thus is not registrable.

The association's main argument was that the word 'blend' is used to describe a whisky that is a mixture of two or more whiskys. Further, the term 'rare blend' is regularly used to indicate the quality of the product; therefore, it is common to trade and devoid of any distinctive character. The association also submitted that as early as 1860 it had used the word 'blend' in its trade. It also stressed that the word 'rare' is a common English word meaning excellent or uncommon. The association argued that the term 'rare blend' is internationally used as a descriptive term and thus cannot be termed a trademark under Section 2(1)(zb) of the Trademarks Act.


The deputy registrar of trademarks held that the term 'rare blend' is highly descriptive and characteristic of the goods in question, and thus cannot qualify for registration. It is a prevailing practice in the whisky trade to use 'rare blend' or 'blend' to describe the characteristics and quality of the goods. It is left open for other traders to use the term to describe their goods; therefore, no monopoly can be awarded to the words 'rare blend'. The deputy registrar further observed that as the mark had not yet been used by the applicant, no harm was likely to be caused to the applicant. In light of these observations, the registrar refused registration of the mark.


This decision shows that a mark which is devoid of any distinctive character or which is incapable of distinguishing the goods of one party from those of another constitutes grounds for refusal under Section 9 of the Trademarks Act. Further, any mark that indicates, for example, the quality or quantity of the goods is liable to be refused registration. The deputy registrar correctly observed that it is left to other traders to describe the nature and quality of their goods legitimately. An application for any mark that would hinder such freedom is liable to be refused.

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