The Hon'ble Delhi High Court, in the recent case of Agatha Christie Limited ("Appellant") versus The Registrar of Trademarks ("Respondent"), quashed the order of the Trademarks Registry, whereby the Registry had refused registration of the trademark "And Then There Were None" ("Impugned mark").
The Appellant in the said matter is a company that was established by the renowned crime fiction writer, Agatha Christie, in the year 1955, which is now managed by her great grandson, James Prichard. As many readers may know, Agatha Christie is affectionately known and remembered as the "Queen of Crime". She is widely acclaimed as one of the bestselling crime-fiction writers of all time. One of the author's most famous title is unarguable "And then there were none", which was first published in 1939 under a different title and is widely regarded as a classic by fans of crime fiction literature and admirable referred to as the "G.O.A.T." by millennials.
The Appellant had filed an application for registration of the Impugned mark sometime in December, 2017, under class nos. 9, 16 and 41, for a host of sub classifications including but not limited to pre-recorded magnetic, digital and optical recording media, printed matter, books, artwork publications, magazines, event programs providing of training, entertainment, cultural activities etc.
Pursuant to scrutinising the said application, the Respondent issued a show cause notice, wherein it suggested that the Impugned mark was not fit for registration. Thereafter, the Appellant was heard and the Respondent, vide its order dated January 14, 2021 ("Impugned Order"), rejected the application on the primary ground that the Impugned mark lacked distinctiveness and provided the following justification for the same:
"To my mind, applied mark is a kind of mark where one needs to educate the people that it's not just any phrase but a trademark and is intended to be so used. Applied mark is only proposed to be used. There is no substantive evidence that the applied mark has been used as a trademark ever. Applied mark lacks distinctiveness."
Aggrieved by the Impugned Order the Appellant filed the present case before the Hon'ble Delhi High Court, with the prayer that the Impugned Order be quashed and the Impugned mark be registered.
Interestingly, when the matter was listed before Justice C. Hari Shankar, the first question that the Hon'ble Judge put to the counsel for the Respondent was that whether the Respondent had any objection to him hearing the matter as Justice C. Hari Shankar himself is an aficionado and admirer of Agatha Christie. To this the learned counsel for the Respondent replied saying that the Respondent had no such issues and in fact he too was an admirer of great author.
Moving to the facts of the matter, the Appellant contended that on the date of filing the application for registration of the Impugned mark, there were no marks even remotely similar to the Impugned mark, let alone any identical marks, with respect to the classes under which the Appellant sought registration of the Impugned mark.
After hearing the contentions of the parties and considering the Impugned Order, the Hon'ble Court opined that the Trade Marks Act, 1999 ("Act"), confers, as a matter of right, the right to register a trademark which does not suffer from any of the infirmities which the Act contemplates. Subsequent thereto, Justice C. Hari Shankar enlisted the grounds on which registration of a mark may be refused, i.e. Sections 9, 11 and 13 of the said Act and further noted that:
"The circumstances, in which registration of a mark can be refused, being specifically statutorily delineated in the Trade Marks Act, have to be regarded as exhaustive. Absent any of these circumstances, therefore, a request for registration of a trademark cannot be refused"
Refuting the reasoning of the Respondent that the Impugned mark is not capable of being represented graphically or is incapable of distinguishing the goods/ services being provided under the mark, the Hon'ble Court clarified that the Impugned mark is the title of one of Agatha Christie's most well-known work, and that a clear association is created between the Impugned mark and the Appellant i.e. a company established by Agatha Christie herself and hence the Impugned mark could justifiably be used vis-à-vis goods/ services which the Appellant company provides. Justice C. Hari Shankar further added that:
"The right to register a mark under which one intends to provide good or services is a valuable right, partaking of the character of Article 19(1)(g) of the Constitution of India. Any decision not to allow registration of a mark has, therefore, to be informed by reasons which should be apparent on the face of the decision. The impugned order, in my view, is bereft of sufficient reasons to justify the decision taken therein."
Accordingly, Justice C. Hari Shankar allowed the appeal by setting aside the Impugned Order as being unreasoned and remitted the same to the office of the Trademarks Registry with the direction that, if the Appellant's application does not suffer from any other fatal infirmity, then the Impugned mark ought to be registered.
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