Delhi High Court - Orders
Joy Universal Ltd vs Registrar Of Trademarks on 8 December, 2022
Author: Sanjeev Narula
Bench: Sanjeev Narula
$~7
* IN THE HIGH COURT OF DELHI AT NEW DELHI
+ C.A.(COMM.IPD-TM) 141/2022
JOY UNIVERSAL LTD ..... Appellant
Through: Mr. Abhishek Saket, Ms. Shahana
Farah, Ms. Shilpa Rajshekar and Ms.
Sanna Harta, Advocates.
versus
REGISTRAR OF TRADEMARKS ..... Respondent
Through: Mr. Harish Vaidyanathan Shankar,
CGSC with Mr. Srish Kumar Mishra,
Mr. Sagar Mehlawat and Mr.
Alexander Mathai Paikaday,
Advocates.
CORAM:
HON'BLE MR. JUSTICE SANJEEV NARULA
ORDER
% 08.12.2022
1. The present appeal under Section 91(1) of the Trade Marks Act, 1999 [hereinafter "the Act"] impugns order dated 24th October, 2018 [hereinafter "impugned order"] read along with statement of reasons dated 26th December, 2018, both issued by Senior Examiner of Trade Marks, whereby Appellant's application no. 2719975 for word mark "PRINCESS PAT"
under Class 03 [hereinafter "subject mark"] was refused under Section 11(1)(b) of the Act. The relevant portion of statement of reasons is extracted hereunder: -
"Advocate Manish Madhukar appeared, made submission, heard , mark is Signature Not Verified Digitally Signed C.A.(COMM.IPD-TM) 141/2022 Page 1 of 5 By:SAPNA SETHI Signing Date:14.12.2022 12:24:21 objectionable under section 11(1)(b). Hence refused. Section 11(1)(b) - Relative grounds for refusal of registration. The said trade Mark Is refused for registration because of its similarity to an earlier trade mark and the identity or similarity of the goods or services covered by the trade mark there exists a likelihood of confusion on the part of the public, which includes the likelihood of association with the earlier trade mark."
2. The examination report dated 11th September, 2015 [hereinafter "Examination Report"] cites seven conflicting marks.
3. Counsel for Appellant submits that status of five out of seven cited marks in the Examination Report has changed and has handed over a compilation of documents across the board which indicate that one of the cited marks has been refused and four have been removed from the register of trademarks, details whereof are as follows:
"Sl. Application STATUS AS ON PAGE
No. No. & MARK DECEMBER 7, 2022 No
1 1060870 REMOVED 1
PRINCESS
2 1060871 REMOVED 2
PRINCESS
3 1077545 REMOVED 3
PRINCESS
4 1362464 REMOVED 4
PRINCESS
5 2599834 REFUSED 5"
PRINCESS
4. As regards other two conflicting device marks, he argues that visibly the marks are entirely different when compared to Appellant's subject mark:
Appellant's Subject Mark Alleged Conflicting Mark Signature Not Verified Digitally Signed C.A.(COMM.IPD-TM) 141/2022 Page 2 of 5 By:SAPNA SETHI Signing Date:14.12.2022 12:24:21 PRINCESS PAT
5. The court has heard the counsel. Appellant has applied for composite mark "PRINCESS PAT" without any exclusive rights on constituent words - individually or separately. Respondent has denied registration under Section 11 of Act by solely relying on previous applications for a similar or identical marks, although majority of them stand removed/ refused. Appellant has registrations for identical mark in several other jurisdictions, including European Union, Russia, Taiwan, United States of America, Japan, France, Hong Kong, South Korea, Philippines, Thailand, as mentioned in Appellant's reply to the Examination Report. On account of long and continuous use, Appellant has applied for subject mark on the ground that it has acquired distinctiveness and holds trans-border reputation. Registration was sought in India in order to expand its business. Given the removal of four and refusal of one out of seven cited marks from the register of trademarks, circumstances have indeed changed and comparison only needs to be undertaken with the two remaining marks. It is a well settled principle Signature Not Verified Digitally Signed C.A.(COMM.IPD-TM) 141/2022 Page 3 of 5 By:SAPNA SETHI Signing Date:14.12.2022 12:24:21 that the comparison has to be made between two trademarks as a whole.1 The mark under application number 733306 contains the word "princess" written in Hindi along with picture of a lady and application under number 1008122 is entirely dissimilar on a bare perusal. Both marks are, (i) device marks containing varying elements of design as opposed to the subject mark which is a word mark, and (ii) ex-facie dissimilar to the subject mark and do not use the word "PAT".
6. In view of the above, ground for refusal of application under Section 11(1)(b) of the Act is not sustainable and accordingly, the appeal is allowed with following directions: -
(i) Impugned order dated 24th October, 2018 is set aside.
(ii) Trademark Registry is directed to process the registration application for the subject mark.
(iii) Subject mark be advertised within a period of three months from today.
(iv) If there is any opposition, the same shall be decided on its own merits, uninfluenced by observations made hereinabove.
(v) The rights in subject mark shall be restricted to combination of words "PRINCESS PAT" as depicted above.
(vi) It is clarified the subject mark shall not grant any exclusive rights in the words, "PRINCESS" or "PAT", separately or individually. This disclaimer shall be reflected in the trade marks journal at the time of advertisement as also if the subject mark ultimately proceeds for registration.1
Cadilla Healthcare Ltd. v. Cadilla Pharmaceuticals Ltd., 2001 SCC OnLine SC 578.
Signature Not Verified Digitally Signed C.A.(COMM.IPD-TM) 141/2022 Page 4 of 5 By:SAPNA SETHI Signing Date:14.12.2022 12:24:217. With the above directions, the appeal is disposed of along with pending application(s), if any.
8. Registry is directed to supply a copy of the present order to the Trademark Registry at [email protected] for compliance.
SANJEEV NARULA, J DECEMBER 8, 2022 as Signature Not Verified Digitally Signed C.A.(COMM.IPD-TM) 141/2022 Page 5 of 5 By:SAPNA SETHI Signing Date:14.12.2022 12:24:21