The Intellectual Property Appellate Board (IPAB) has set aside an order of the Trademarks Office rejecting an application of the U.S.-based Starwood Hotels & Resorts Worldwide.
Starwood had filed an application seeking registration of the trademark ‘Preferred Guest’.
The application was rejected mainly on account that the word ‘guest’ was not registrable for providing service to the guests of the hotels. In its appeal, Starwood pointed out that the mark ‘Preferred Guest’ had been used for several years across the world, and owing to such wide scale of use, the trademark had acquired distinctiveness which was exclusively associated with it.The company also noted that the mark was being used in India since 1999 and was being used in chain hotels in India such as Sheraton, Le Meridien, Aloft and Westin.
Starwood also said registration had been obtained in over 90 countries.
IPAB Chairman Justice Manmohan Singh and Sanjeev Kumar Chaswal, Technical member, Trademarks, allowed the mark ‘Preferred Guest’ to be advertised in the Trademark Journal with the disclaimer on the word ‘guest’.
“This is a case where transborder reputation has been taken into account as an important factor for the purpose of accepting the trademark in the process of seeking registration,” Suhrita Majumdar and Dominic Alvares, IP attorneys at S. Majumdar & Co, said.