HC orders registration of KVIC’s trademark for cow dung-based “Prakritik Paint”

Bombay High Court orders Trademark Registrar to register KVIC's Prakritik Paint, rejecting previous refusal based on generic terms and similar marks.

MUMBAI: The Bombay high court on Wednesday directed the Registrar of Trademarks to register a device mark, Prakritik Paint, an anti-fungal, anti-bacterial cow dung-based paint developed by the Khadi and Village Industries Commission (KVIC). The registrar had earlier refused to register the device mark for using generic words and on the grounds that a similar mark already exists for a similar product.

HC orders registration of KVIC’s trademark for cow dung-based “Prakritik Paint”

On December 17, 2020, KVIC announced the launch of its new anti-fungal, anti-bacterial paints, under the brand name Vedic Paint, whose products on January 12, 2021, underwent a re-branding to become Khadi Prakritik Paint. After this, KVIM applied to register its device mark on March 19, 202. The registrar objected as the mark included generic words and that a similar device mark already exists for a similar product in the market.

Advocate Shwetasree Majumder, representing KVIC, submitted that the registrar failed to look at the device mark as a whole. He pointed that the registration of a similar device mark had already been granted to a Khadi Prakritik Paint in 2021. “In the face of such registrations granted by the very same authority, denial of registration of the subject mark is wholly unsustainable”, he said.

Advocate Yashodeep Deshmukh, representing the registrar of Trademarks, argued that the mark consists of the words ‘Prakritik’ and ‘Paint’, along with a Hindi phrase at the bottom of the subject mark and a picture of a cow, which are all generic and over which KVIC cannot claim exclusivity. “There is no question of granting registration for the mark as a whole”, he concluded.

A single judge bench, led by justices Manish Pitale, favouring KVIC, allowed the registration to proceed. Highlighting that a device mark, even with a proprietary right asserted upon its registration, must be considered as a whole. “The words ‘taken as a whole’ assume great significance. The registration of such a trademark does not confer any exclusive right in the matter forming only a part of the whole of the trademark so registered”, it said.

The court criticized the registrar for the erroneous basis of the objection raised, stating that the words written at the bottom of the subject mark do not indicate any geographical origin. It further condemned the refusal of registration based on individual parts of the subject mark, stating that the registrar completely ignored the evidence placed on record to show the wide publicity given to the device mark. Noting that a similar device mark has already been registered under the similar mark, the court ruled that it was not appropriate for the Registrar to refuse registration for the device mark of this one. The registrar was directed to proceed with the registration of the subject mark.