The Battle for Distinctiveness Against Trademark Registrars: Abu Dhabi Global Market v Trademark Registrars, Delhi CA (Comm. IPD-Tm) 10/2023

Registration of a trade mark can be refused on absolute grounds (under Section 9 of the Trade Marks Act 1999) or on relative grounds (under Section 11 of the Trade Marks Act 1999). Section 9 of the Act provides for the circumstances under which a trademark may be considered non-distinctive and therefore unsuitable for registration. In other words, the mark needs to be distinctive. That said, one must be able to distinguish the owner’s mark from any other mark on the market. If the owner’s mark looks similar to any other mark, the potential for confusion is bound to arise as consumers will associate the two marks with each other. Both trademarks should be distinct to avoid market confusion.

Article 9 provides that a trademark may be distinctive if:

1. One person’s goods and services can be easily distinguished from those of others with just a glance at the markings.
2. Any sign adopted by the proprietor shall not denote any kind, quality, quantity, use, geographical origin, value and character of the goods and services.
3. Finally, any trademark adopted by the proprietor should not become customary in the prevailing language, nor should it become a good faith and established practice of trade.

In the recent case Abu Dhabi Global Markets v Registrar of Trademarks, the distinctiveness of the trademark was determined in great detail, Delhi CA (COMM.IPD-TM) 10/2023, Delhi High Court overturned the refusal order for the trademark ‘‘ announced by the Assistant Registrar of Trademarks. The applicant for the trademark is Abu Dhabi Global Market (ADGM), an international financial center and free zone located on Al Maryah Island, Abu Dhabi, the capital of the United Arab Emirates. This global marketplace accommodates a variety of local and international businesses and institutions and provides them with a secure platform to build their businesses and expand. ADGM has applied for a trademark’‘ got rejected. The Registrar of Trade Marks stated the following grounds for refusal:

1. The mark lacks distinctiveness and therefore does not appear to have been invented or invented.
2. The mark includes “ABU DHABI”, which is of a geographical origin and therefore not distinctive.

ADGM stated that the main part of the trademark application – ‘‘ has been registered to establish its distinctiveness. The other half of the composite mark consisting of “ABU DHABI GLOBAL MARKET” has been adopted by the applicant under the Federal Law of the United Arab Emirates (UAE) – Federal Decree No. 15 of 2013 dated 11^day February 2013. Therefore, ADGM has the right to use “ABU DHABI” in its logo.

After hearing both parties, the court found that the order passed by the Registrar on this application was flawed. At first, the order was worded absurdly. The court noted that, as far as trademarks are concerned, there is no requirement that a trademark must be “created” or “invented” in order to be registered. A trademark of course needs to be distinctive but not inventive. Furthermore, it was observed that user affidavits do not determine the distinctiveness of a mark. Distinctiveness is established only when the mark is capable of distinguishing the goods and services of the owner from those of others.

The court supported the applicant’s above arguments and stated that the applied for composite mark was distinctive because the applicant was legally allowed to use “ABU DHABI” in its mark. Accordingly, the Court ordered the following in favor of the applicant and the health of his mark:

1. The order passed by the Assistant Registrar has been revoked.
2. The affected application (application number – 3184380) is allowed to continue to advertise in the journal.

A cursory glance at the criteria set out in this section will determine that a trademark should be employed in such a way as to distinguish the goods and services of the owner from those of others. No matter how simple a mark (word and/or device) may be, it can be considered distinctive if no one else is found using it, or even a variation of it. For example, the well-known trademark “Apple”. Whenever someone mentions “Apple” or a device”’, the first thing that comes to mind is the electronic devices sold under the trademark. Here, device and word marks are considered distinctive. The term and the device should never be confused in the minds of consumers.

If a trademark can clearly distinguish goods and services in the minds of consumers, then the trademark can be considered distinctive without any doubt.