Is it possible to register a book’s title as a trademark? HC responds

A significant judgment by the Delhi High Court has enabled a book title to be used as a trademark for a company.

Justice C Hari Shankar’s single-judge bench overturned a judgment denying Agatha Christie Ltd. (a company founded by famed book writer Agatha Christie in 1955 and now operated by her grandson) trademark registration for “And There Were None,” the title of a book she wrote.

The Court dismissed the Registrar of Trademarks’ argument that the mark was not ‘distinct’ enough in the assailed order.

Noting that the Trade Marks Act of 1999 grants the right to register a trademark that does not suffer from any of the aforementioned defects as a matter of right, the Court said that the challenged order cannot be maintained on facts or in law.

The proposed trademark did not fall under any of the categories of grounds listed in Sections 9, 11, and 13 of the Act for refusing registration of a mark used, or planned to be used, as a trademark.

“The conditions under which a mark might be rejected registration must be considered as exhaustive, as they are clearly outlined in the Trade Marks Act. A trademark registration request cannot be denied in the absence of any of these factors.”

The Court went on to say that names, words, and combinations of names/words are “marks” within the meaning of the Trademarks Act, 1999’s Clauses (zb) and (m) of section 2(1) which define “trademark” and “mark.”

The Court couldn’t figure out how the Registrar of Trademarks came to the decision that a “trademark” can’t be depicted graphically and can’t identify one person’s goods from those of others, which is the sole another criterion for a “trademark.”

Justice C Hari Shankar told the Respondent that he admires the Author and that he had no issues with him presiding over the matter, which he did not.