Overturning of the Trade Marks Registry’s Refusal Order by the IPAB

Anand and Anand

We are pleased to share that our team comprising of Revanta Mathur and Sannat Chandna, helped Wahl Clipper Corporation overturn a refusal order issued against the registration of the trademark ‘SUPER TAPER’ under application no. 2574212 in Class 08 by the Trade Marks Registry (hereinafter referred to as the “TMR”). The TMR refused the application citing lack of distinctiveness and descriptive nature of the SUPER TAPER mark. The matter was at this stage handled by alternate counsel.

Subsequently, the client requested us to take up the matter for them and we filed an appeal before the Intellectual Property Appellate Board (hereinafter referred to as the “IPAB”) challenging the decision of the TMR.

The appeal was admitted and appointed for a final hearing. At the hearing before the Bench comprising of Justice Manmohan Singh & Dr. Onkar Nath Singh, submissions were made as follows:

Inherent distinctiveness of the mark was highlighted since the term ‘SUPER TAPER’ was only suggestive at best and thereby, qualified to be inherently distinctive in nature. Notwithstanding the aforesaid, we also emphasized on the several registrations for the mark, internationally (with the earliest one dating back to 1987 in France) along with the Affidavit of Use placed on record which incorporated substantial advertising material showcasing use of the mark for over 3 decades internationally and over 13 years in India, owing to which the trademark had acquired distinctiveness and was thereby, capable of being identified and protected as a trademark in India.

The Bench agreed with our submissions and set aside the order of the TMR, and ordered the TMR to accept the application and have it advertised in the Trade Marks Journal, as per the Trade Marks Rules, 2017.

Wahl Clipper Corporation (Wahl) has been the leader in the professional and home grooming category since the year 1919, with over 3,300 employees worldwide and a robust customer base in approximately 165 countries.