The Delhi High Court has held that the mark “D-TAN”, in the context of cosmetic and skincare products in Class 3, is descriptive of the nature, kind and intended purpose of the goods, is devoid of distinctive character, is not capable of distinguishing the goods of one person from those of another, and appears to be common to trade. Consequently, the mark could not have been validly registered and was wrongly remaining on the Register, warranting rectification under Section 57(2) of the Trade Marks Act, 1999.
The Court also held that mere sales figures and commercial success do not, in the facts of the case, establish secondary significance. Accordingly, the respondent no. 2/Registrar of Trade Marks was directed to cancel the registration of the mark “D-TAN” in favour of respondent no. 1 bearing application no. 2065580 registered on January 30, 2018 in Class 3, and to remove/rectify the said registration from the Register of Trade Marks within four weeks from the date of receipt of the order.
A Single Judge Bench of Justice Tushar Rao Gedela observed that the Trade Marks Registry had raised objections under Sections 9(1)(a) and 9(1)(b) of the Act on February 02, 2012, and that respondent no. 1’s reply dated September 30, 2014 did not satisfactorily answer the objection that the mark was devoid of distinctive character, nor did it provide any substantive explanation to overcome the objection that the mark consisted exclusively of indications designating kind, quality or intended purpose. The Bench further observed that respondent no. 1 had relied on Section 12 of the Act, and held that Section 12 operates as an exception permitting registration in cases of honest concurrent use or special circumstances, which itself implies the possibility of other users of identical or similar marks in respect of the same or similar goods or services.
The Bench then examined the meanings of “de” and “tan” and held that, when combined in the context of skincare products in Class 3, “DETAN” or “D-TAN” clearly demonstrates removal or reversal of tanned skin and would undoubtedly imply a product which may bring about removal or reversal of tanning of the skin. On that basis, and also considering the screenshots of respondent no. 1’s own products and other manufacturers’ products, the Court held that “D-TAN” and “DETAN” are pure descriptors of the kind, quality and intended purpose of the products and fall strictly within Section 9(1)(b) of the Act.
The Bench additionally found that the mark was not capable of distinguishing the goods of one person from those of another and appeared to be common to trade, and also observed that respondent no. 1 itself used “Professional O3+” prominently on its products and “D-TAN” in a small font, usually with prefixes such as “BLUEBERRY”, “CRANBERRY” and “OXY”, which impelled the Court to conclude that respondent no. 1 itself used “D-TAN” more in the nature of a description of the goods rather than as a trademark.
As regards acquired distinctiveness or secondary significance, the Bench held that the Chartered Accountant certificates and sales figures only prima facie established commercial success, but did not establish that the mark “D-TAN” had been imprinted in the minds of the general public such that it denoted the goods of respondent no. 1 and respondent no. 1 alone. The Bench further held that the petitioner fell within the meaning of “an aggrieved person” under Section 57 because the cease-and-desist notice dated April 14, 2023 sought to restrain the petitioner from using “D-TAN/DETAN” on its products, and such restriction, once the mark was found descriptive, would be restrictive of the petitioner’s lawful trade.
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Briefly, the petitioner under Section 57 of the Trade Marks Act, 1999 had sought rectification of the trademark “D-TAN” bearing registration no. 2065580 in Class 3 granted in favour of respondent no. 1. The respondent no. 1 had applied for registration of “D-TAN” on December 09, 2010, claiming user since December 01, 2009, and the mark proceeded to registration on January 30, 2018. The petitioner launched products under the mark “AQUALOGICA” in 2021, and, upon receiving a cease-and-desist notice dated April 14, 2023 alleging infringement by the petitioner’s product “AQUALOGICA DETAN + DEWY SUNSCREEN”, replied that “D-TAN” is a descriptive term commonly used in the trade for removal of tan and is therefore not eligible for trademark protection. Aggrieved by the respondent no. 1 seeking to restrain use of “DETAN”, the petitioner instituted the rectification petition contending that the mark is descriptive, devoid of distinctive character, common to trade, and wrongly remaining on the Register.
