AND THEN THERE WERE NONE – Agatha Christie Ltd vs. Registrar of Trademark

By Pranit Biswas and Bhanu Dhingra

There have been many cases overtime, wherein IP offices in India, while refusing registration, have failed to provide adequate reasoning or explanations for the decision. However, a recent case of the Hon’ble Delhi High Court has shoved a huge stop-sign on such Orders. Unreasoned orders? And then there were none, hopefully.

The Hon’ble Delhi High Court recently remanded such a case back to the Registrar of Trademarks, and interestingly, the case was regarding the trademark ‘AND THEN THERE WERE NONE’, and yes, it belonged to the late Dame Agatha Mary Clarissa Christie, Lady Mallowan (or her company rather).  ‘AND THEN THERE WERE NONE’ is the title of arguably the most famous work of Agatha Christie, which was published 80 years ago.

Background of the case:

Agatha Christie Limited was established in 1955 by the author herself and is now being operated and managed by her great-grandson, Mr. James Prichard. The company had filed an application for registration of the trademark “AND THEN THERE WERE NONE” on December 05, 2017 in Classes 9, 16 and 41 of the Trademarks Rules, 2017. As per the records of Trade Mark Registry, the particulars of the said trademark owned by the Appellant/Applicant i.e., Agatha Christie Limited are as follows-

 

Initially, the Registry had issued an Examination Report/ Office Action dated January 04, 2018 in respect of the application, wherein an objection was raised under Section 9(1)(a) of the Trademarks Act, 1999, that the mark is non-distinctive. The Applicant had filed a reply to the office action and the matter had come up for hearing as well (wherein material was submitted in support of the application), the Deputy Registrar of Trademarks was not having it, and the application was finally refused vide an Order dated January 14, 2021. Relevant excerpt from the Order is pasted below:

Being aggrieved, the Applicant filed a suit in the Hon’ble Delhi High Court.

Contentions

The Appellant had contended that as on the date of the application filing, no mark, even remotely similar to ‘AND THEN THERE WERE NONE’ was on record on the Register, either in regards to the goods and services for which registration was sought by the appellant, or in respect of any other goods and services.

Findings of the Court

Funnily, in the Order dated December 08, 2021, the Learned Justice Mr. C. Hari Shankar has mentioned that at the very outset of the proceedings, he had enquired with the counsel for the Respondent (Trademarks Registry) that whether they have any objection to him adjudicating the matter, as he is an avowed aficionado and admirer of Agatha Christie! To which the Respondent’s counsel answered in the negative, and asserted that he himself is a fan!

In this regard, the Court had clearly noted that the only ground on which the mark has been refused is that it is not distinctive, and that the mark, in fact, is prima facie distinctive for the goods applied for, and neither is the mark descriptive.

The Hon’ble Court also noted that grounds for refusal can only be the ones enumerated under Sections 9, 11 and 13 of the Trademarks Act, 1999, and in the absence of any suitable objection under the said sections, a request for registration simply cannot be refused.

The Hon’ble Court also delved into the very nature of a trademark and observed that as per the Act, while looking at such marks, the criteria to count as a trademark is that the same must be capable of being represented graphically and must be capable of distinguishing the goods of one person from those of others. In this regard, the Hon’ble Court noted that there is no such observation in the impugned Order of the Registry. It was further noted that as the mark in question is the title of the most famous book of Agatha Christie, it is also capable, prima facie, of creating an association between the name and the appellant, which is a company established by Agatha Christie herself. The Hon’ble Court stated in this regard that if the mark is distinctive, and is not identical or confusingly or deceptively similar to any earlier mark which is registered or in use from a prior date in respect of similar goods or services, or which results in the passing off, by the applicant, of its goods or services as those of another, registration of the mark is a matter of right.

Upon perusal of the facts and order, the Hon’ble Delhi Court held that the order was ex facie unsustainable, both on facts and in law.

The court while allowing the Appeal, thus quashed the impugned order and set it aside. The matter has been remitted to the office of the Registrar of Trademarks with the direction that, if the application of the appellant does not suffer from any other fatal infirmity, the mark ‘AND THEN THERE WERE NONE’, as sought by the Appellant, be registered under Classes 9, 16 and 41 of the Trade Marks Act, 1999 and Trade Marks Rules, 2017.

Conclusion

The primary purpose of any trademark is to guarantee the identity of the provenance of the goods or services to the consumer. In order to fulfil its purpose, a trademark must be able to distinguish its goods and services from those of others.

In this instant case, the Hon’ble Court discussed the importance of the right and freedom to trade, including the register trademarks and seek trademark protection. It was clarified that the trademark must be distinguishable and recognized in order to be protected and that if it does not attract any objection as enshrined under sections 9, 11 and 13 of the Act, the mark must be registered.

The Hon’ble Court in this case clearly noted that the impugned order could not explain the grounds of refusal or sustain in facts or law. The Delhi High Court ruled that there was no ground based on which the mark could have been rejected under the Trade Marks Act, 1999, as the mark was not descriptive and because no similar marks were existed on the Register.

Most importantly, the decision reinforces that trademarks cannot be refused registration lightly, and orders must be well reasoned and must definitively expand upon objections as laid down under Sections 9, 11 and 13 of the Act.

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