INTELLECTUAL PROPERTY APPELLATE BOARD
Guna Complex Annexe-I, 2nd Floor, 443, Anna Salai, Teynampet, Chennai-600018
ORA/7/2010/TM/CH
FRIDAY, THIS THE 9th DAY OF MARCH, 2012
Hon’ble Smt. Justice Prabha Sridevan … Chairman
Hon’ble Ms.S. Usha … Vice-Chairman
Citibank, N.A./Citigroup Inc.
399, Park Avenue,
New York,
United States of America, 10043. … Applicant
(By Advocate: Mr. Rajesh Ramanathan)
Vs.
Wealth Advisors (India) Pvt. Ltd.
Lemuir House, Ground Floor,
10, G N Chetty Road,
T. Nagar,
CHENNAI-600017. … Respondent
(By Advocate: Ms. Subha Shiney and Arun C. Mohan)
ORDER (No.52/2012)
Hon’ble Smt. Justice Prabha Sridevan, Chairman:
An application for removal of the mark Wealthadvisors (logo) bearing No.1317858 in Class 36.
2. According to the applicant, applicant is the proprietor of the trade mark CITI WEALTH ADVISORS/CITIGROUP WEALTH ADVISORS (Annexure ‘A’). The applicant came to know about the impugned trade mark through a search. They missed the advertisement of the impugned trade mark and therefore did not oppose the same. According to them “WEALTH ADVISORS” is descriptive and it would be against public interest to grant monopoly to a single trader to the word “WEALTH ADVISORS” involving services in Class 36 and it is also stated that the word “WEALTH ADVISORS” has become publici juris in respect of the services falling under Class 36. Therefore they sought for rectification. The evidence filed by them is at Annexure ‘A’. ‘A-16’ is an advertisement of the applicant which speaks of their online brokerage facility called “CITI WEALTH ADVISORS”. Exhibit ‘A-18’ is the dictionary meaning of wealth. Annexure ‘B-1” is “ASK Wealth Advisors”. Annexure ‘B-3’ is Wealth Advisors, Inc. Annexure ‘B-4’ is “Tamalpais Wealth Advisors” and so on.
3. In the Counter Statement the respondent contended that they are a Full Service Investment Advisory Company established in the year 2004. They had honestly adopted the mark “Wealthadvisors” and “WAI” monogram logo. They have extensively and widely advertised the mark. According to them their mark has become distinctive and capable of distinguishing their services. They have been awarded the Best Performing Financial Advisor in South India. A lot of thought has gone into conceiving and creating the WAI logo. It has also set up its own Research and Support teams to fulfill these requirements. Its product lines include Mutual Deposits, Life Insurance and General Insurance. The Respondent caters to a large clientele including Banks, Institutions, Insurance Companies, Corporates, Trusts, Provident Funds, Small and Medium Enterprises, High Net Worth Investors and Emerging High Net Worth Investors. The respondent has described how they have designed the WAI logo. According to them the applicant is not the registered proprietor of the service mark “CITI WEALTH ADVISORS”. According to them “Wealthadvisors” is a coined word, an arbitrary word and it has fulfilled all the conditions and provisions for a trade mark to be registered. The respondent has referred to the extensive, unique and tremendous goodwill that has accrued to them by virtue of extensive use of the service mark “Wealthadvisors” and the logo. The respondent works closely with corporate giants like TATA Asset Management, Birla Sun Life Asset Management, IDFC Mutual Fund, Reliance Mutual Fund, ABN AMRO, HDFC Mutual Fund, Prudential ICICI Mutual Fund, DBS Chola Mutual Fund, JP Morgan Asset Management Franklin Templeton Investments, Karvy Computershare, CAMS Pvt. Ltd., Fortis Mutual Fund, Union Bank of India, City Union Bank, Hanmer & Partners Communications, Bharti AXA General Insurance and so on and this goes to show the credibility of the respondent and the extent of its popularity in industry circle. The respondent submits that it is enrolled as an AMFI Registered Mutual Fund Advisor (Association of Mutual Funds in India) and is a winner at UTI MF – CNBC TV18 Financial Advisor Awards in the Category “Best Performing Regional Financial Advisor (South)” in the year 2008-09. The respondent has been chosen to partner leading Banks like Union Bank of India and City Union Bank to offer Wealth Management Solutions to their respective clientele. The evidence they have filed are the certificate of incorporation with the Registrar of Companies and the registration with the SEBI, the details of their income tax return, the lease agreement with regard to the premises which they are occupying, the certificate by the Chartered Accountant to show the worth of their assets and that they are an independent full-service investment advisory company (emphasis supplied). They have also filed their equity mutual fund report of the Indian Corporate Briefs and various newspaper cuttings to show that the respondent has won awards.
4. The learned Counsel for the applicant submitted that the impugned mark is devoid of distinctive character. It is descriptive and on the date of application the user was from 20.5.2004. He submitted that example of coined word/arbitrary trade marks are marks like “Apple” in relation to computer but the words “WEALTH ADVISORS” with regard to the services that they are providing is purely descriptive. He also submitted that with regard to the impugned mark which does not possess distinctiveness and is purely descriptive the Board should see whether it has acquired distinctiveness on the date of user, which is May, 2004. Only then the mark deserves to be registered and not otherwise.
5. The learned Counsel for the respondent submitted that the two words are suggestive not descriptive and in the business, the words used are “Wealth Management” and not “Wealth Advisor”. The date of application is 28.10.2004. But there is evidence that they had used the mark from 20.5.2004. The mark is a logo and not ‘word per se’. The learned Counsel submitted that the applicants have not denied the prior adoption by the respondent. There are other firms using the word “Wealth Advisors” and no rectification has been filed against them. This is not a case where Section 36(2) of the Trade Marks Act, 1999 (in short ‘Act’) will apply. The learned Counsel submitted that the person alleging that the words are descriptive should prove the same. Further the services are given to a class of customers who are capable of distinguishing the marks and their services.
6. The following cases were cited:
(i) 2008 (37) PTC 332 (IPAB) – Sociéte des Produits Nestle S.A., Appellants Vs. Super Star Confectionery Co. (P) Ltd., Respondent: The decision of this Board where the word “COFFEE TIME” was held to be descriptive and that when the application has been made in the year 1991 claiming the user from the same year it could not have acquired distinctiveness in a short span of time.
(ii) 2005 (30) PTC 1 (SC) – Godfrey Philips India Ltd., Appellant Vs. Girnar Food & Beverages (P) Ltd., Respondent in which it was held that a descriptive trade mark may be entitled to protection if it has assumed a secondary meaning identifying it with a particular product or being from a particular source – There is no such evidence here.
(iii) [2001] EUECJ C-383/99 P – Procter & Gamble Company, Appellant Vs. Office for Harmonisation in the Internal Market (Trade Marks and Designs) (OHIM), Respondent:: Here the mark was BABY-DRY and word combination like BABY-DRY can be regarded as being wholly descriptive in nature and they are lexical inventions bestowing distinctive power on the mark – Here “WEALTH ADVISORS” cannot denote any other services except the services that the respondent provides.
(iv) 1986 PTC 235 – Globe Super Parts, Plaintiff Vs. Blue Super Flame Industries and Another, Defendants: Here the mark was “SUPERFLAME” and it was held that it was a coined, fancy and invented name. The word “SUPERFLAME” was used in connection with ‘Gas Cookers’ and ‘Stoves’ - That is not so in the present case.
(v) 2003 (26) PTC 555 (Raj) – Perry Bottling Company, Appellant Vs. S.S. Soda & Soft Drinks Company & Others, Respondents: This relates to the mark “Perry’s Fruit Beer” as under:
“15. The learned Counsel for the respondents tried to support the impugned order of the Trial Court by submitting that the rules framed under the Prevention of Food Adulteration Act, 1954 provide for the standards for Fruit Juice as well as four Fruit Beverage or Fruit Drinks. I perused Clause A.16.01 of the Prevention of Food Adulteration Rules, 1955 which provides that Fruit Juice means the unfermented and unconcentrated liquid expressed from sound, ripe, fresh fruit and with or without the substance mentioned in Clauses (a) and (b) of Clause A.16.01 and it also provides the standards of the acidity which should be present for different category of fruits etc. Fruit Syrup is provided under Clause A.16.03 whereas Fruit Squash is provided under Clause A.16.04 and Fruit Beverage or Fruit Drinks is provided under Clause A.16.05 and, for other articles, in subsequent clauses but no word is given like “Fruit Beer” under these Rules also. It is also alleged by the plaintiff that the word “Fruit Beer” is a combination word invented by the plaintiff and is being used by the plaintiff since its inception. It is not the case of the defendants that the defendants invented this word “Fruit Beer”. The respondent-defendants could not place on record any material to show that the above word “Fruit Beer” was in existence prior to its use by the plaintiff and also that “Fruit Beer” represents a particular item or commodity by which it can be gathered that “Fruit Beer” is a description of a particular item and it was in existence before the date from when the plaintiff is claiming that he invented it. Learned Counsel could not point out from any dictionary that “Fruit Beer” is a name or has been defined any where. Therefore, prima facie, it is held that the plaintiff is registered holder of the trade mark – That does not apply to this case.
(vi) [1972] R.P.C. 28 – Carlsberg Bryggerierne Og Tuborgs Bryggerier De Forene De Bryggerier Aktieselskabet and Carlsberg Scottish Importers Limited Vs. Tennent Caledonian Breweries Limited: This relates to the mark “Special Brew” and it was held that it has become distinctive of the petitioner’s product. In this case, the petitioner had distributed “Special Brew” in 1952 and in 1970. When the dispute arose the respondents claimed the name had become descriptive to a very strong lager – Here the usage is 5 months on the date of application so this decision does not apply.
(vii) [1977] R.P.C. 21 – BLUE PARAFFIN Trade Mark: This is related to the trade mark “BLUE PARAFFIN” as under:
“Held, dismissing the appeal, (1) that on the evidence, the words BLUE PARAFFIN possessed at least some inherent aptitude to distinguish the paraffin of the applicant’s proposed registered user and had been found to be in fact adapted to distinguish in a high degree.
(2) that a mark is registrable provided that it has some inherent attitude to distinguish and that it is to some extent in fact adapted to distinguish the goods of the applicant from the goods of others.”
There is no such evidence here.
(viii) [1896] R.P.C. Vol.XIII 218 – Reddaway Vs. Banham: This is related to the words “Camel Hair” as under:
”Held, that when words which are descriptive of an article have come to denote the goods of a particular manufacturer, he is entitled to restrain others from description of the goods; that the findings of the jury were warranted by the evidence; that the Plaintiffs were entitled to an injunction in the form granted by the judge; and that the Order of the Court of Appeal should be reversed.”
There is no such evidence in this case.
(ix) [1900] R.P.C. Vol.XVII 266 – In the Matter of Trade Mark No.96,997 (“SAVONOL”): This is related to the trade mark “SAVONOL” and it was held that “SAVONOL” was an invented word and the motion to rectify must be dismissed with costs – We hold “Wealth Advisors” is not an invented word but description.
(x) J. Thomas McCarthy, Third Edition, Volume 1 published by Clark Boardman Callaghan 11.23 - McCarthy on Trademarks and Unfair Competition: This is an extract from McCarthy on Trademarks and Unfair Competition which gives a list of non-descriptive words and merely suggestive, to include, words like ACOUSTIC RESEARCH for loud speakers.
(xi) 2011-4-L.W.449 – Eco Lean Research & Development A/S, Petitioner Vs. Intellectual Property Appellate Board, Chennai-18 and The Assistant Registrar of Trade Marks, Trade Marks Registry, Chennai-32, Respondents: This was cited to show that one of the test is to consider the nature and kind of customers – That does not arise here where we have held that the mark is purely descriptive.
(xii) 2007 (34) PTC 370(Del.) – Ishi Khosla, Plaintiff Vs. Anil Aggarwal and Anr., Defendants: This is related to the mark “Whole Foods”. It was held by the Delhi High Court that the plaintiff was using the term differentially from the dictionary meaning given to the words and therefore interim injunction was granted – Here the mark has not acquired secondary meaning.
7. In this case we have already seen the documents, the Certificate of the Chartered Accountants which shows that the respondent company is an independent full-service investment advisory company. The words “Wealth Advisors” clearly indicate the nature of services provided by the respondent which provide solutions for wealth management including risk profiling, asset allocation and portfolio monitoring. Any one with a fair knowledge of English if confronted with the word “Wealth Advisors” will surely understand that the person who describes himself as providing services under that name would be advising how to invest, allocate their funds in shares and how to increase their wealth. The word more descriptive than “Wealth Advisors” cannot be found for describing the services provided by the company. It is identical to the case reported in 2008 (37)PTC 332 (IPAB) (cited supra) where this Board held that if the user was claimed in 1991 and the application was made in 1991 the trade mark could not have acquired distinctiveness. Here the user claimed is 2004 and the application is made in 2004. There is no evidence to show that in the short span of few months the word “WEALTH ADVISORS” had become so associated with the respondent as to distinguish. The fact that their income is high and they have filed huge returns is hardly relevant. All the advertisements are newspaper reportings subsequent to the date of application can also not lend strength to the respondent’s case.
8. Ultimately in considering the question whether a mark has acquired distinctiveness or is descriptive it would depend on the facts of the case and the evidence.
9. In the present case, at the risk of repetition, the mark was applied for on 28.10.2004 claiming user from 20.5.2004 and therefore the mark should have attained distinctiveness in 5 months, that is, the date of application since the words “WEALTH ADVISORS” are purely and absolutely descriptive. The applicant is a Bank which provides services/describes itself as “CITI WEALTH ADVISOR” and therefore the applicant is rightly aggrieved that to grant monopoly over the words “WEALTH ADVISORS” to one person would cause injury to them. In fact this is another reason why the mark should be rectified because the trade mark itself consists of words which are purely descriptive. The pleadings regarding how WAI logo was devised is not relevant here and since the mark mainly consists of the word “WEALTH ADVISORS”, that is the only feature which strikes the eye.
10. We will summarise our description regarding distinctiveness. In this case on the date of application even according to the respondent they have been using only for a few months. What they got is some newspaper reports and the income tax returns. To our mind this does not amount to use of the mark in relation to the goods or services; in this case services. Even if we were to accept it as “use” it does not equal distinctiveness and in all trade marks proceedings whenever we refer to the word “use” it is always in relation to the services or goods and when we talk of distinctiveness or descriptiveness those words are also used only in relation to the use. The mark cannot be considered in isolation. To use the oft quoted example of “Apple” which the learned Counsel for the applicant also referred to, if “Apple” is used as a trade mark for tinned apples, then it is descriptive, but when “Apple” is used for computers it was held to be distinctive. Therefore there can be no decision regarding the registrability of a mark in vacuum, it has to be in relation to the goods or services.
11. The respondents have described themselves as an “investment advisory company”. Therefore when we consider the services that they render there could be no argument that “Wealth Advisors” describes them. They may as well have called themselves “Investment Advisors”. It makes no difference. It clearly describes their services. It is purely a descriptive mark. In 1996 RPC page 281 – British Sugar PLC, Plaintiff Vs. James Robertson & Sons Ltd., Defendant, the following passage is found:
“…There is an unspoken and illogical assumption that “use equals distinctiveness”. The illogicality can be seen from an example: no matter how much use a manufacturer made of the word “Soap” as a purported trade mark for soap the word would not be distinctive of his goods. He could use fancy lettering as much as he liked, whatever he did would not turn the word into a trade mark.”
They cannot do better than this.
12. The submission of the learned Counsel for the applicant that the mark is purely descriptive must be accepted. The learned Counsel for the respondent raised another objection. According to him no rectification application can be filed unless the certificate has been issued to the registered proprietor. The learned Counsel for the applicant submitted that on verification from the web, it was found that it was registered. On 14.9.2011 we directed the Trade Marks registry to send us the records. Under cover of letter dated 8.12.2011, the Deputy Registrar forwarded the reconstituted file which showed that registration was granted in 2009. Therefore the ORA is not premature. We see no condition imposed in the Act that Section 57(1) & (2) can be invoked only if the registration certificate has been issued to the registered proprietor. If the registered proprietor is able to demonstrate that registration has in fact, not been granted then the position may be different. But in this case the registration has been granted as is evident from the records of the Trade Marks Registry and therefore the rectification has been rightly filed. The objection of the Counsel for the respondent deserves to be rejected.
13. ORA/7/2010/TM/CH is allowed. The Registrar is directed to remove the trade mark registered under No.1317858 in Class 36 from the register of trade marks. No order as to costs.
(S. Usha) (Justice Prabha Sridevan)
Vice-Chairman Chairman
(Disclaimer: This order is being published for present information and should not be taken as a certified copy issued by the Board.)
