Delhi High Court - Orders
Krishna E Commerce Technologies ... vs Registrar Of Trademark on 7 December, 2022
Author: Sanjeev Narula
Bench: Sanjeev Narula
$~7
* IN THE HIGH COURT OF DELHI AT NEW DELHI
+ C.A.(COMM.IPD-TM) 130/2022, I.A. 9958/2022
KRISHNA E COMMERCE TECHNOLOGIES PRIVATE LIMITED
..... Appellant
Through: Mr. Abhimanyu Kumar and Ms.
Sneha Tandon, Advocates.
versus
REGISTRAR OF TRADEMARK ..... Respondent
Through: Mr. Harish Vaidyanathan Shankar,
CGSC with Mr. Srish Kumar Mishra,
Mr. Sagar Mehlawat, Mr. Alexander
Mathai Paikaday, Advocates
CORAM:
HON'BLE MR. JUSTICE SANJEEV NARULA
ORDER
% 07.12.2022
1. The present appeal under Section 91 of Trademarks Act, 1999 impugns refusal order dated 17th December, 2021 passed by Senior Examiner of Trademarks [hereinafter, "impugned order"], whereby Appellant's application for registration of device mark [hereinafter, "subject mark"] in class 35, has been rejected at pre- publication stage for following reason:
"Objection raised under section 9(1)(b). Perused and considered the material on record.
Prima facie, the applied trademark "LensBazaar" for the applied specification of services is highly descriptive and shows the intended purpose in reference of services. The applied trademark "LensBazaar" itself indicate the service for sale and purchase of the lenses."Signature Not Verified Digitally Signed By:SAPNA SETHI Signing Date:13.12.2022 11:02:20
[Emphasis Supplied]
2. Mr. Abhimanyu Kumar, counsel for Appellant, submits that Appellant adopted "LensBazaar" in 2009, and obtained registration of mark in class 10 on proposed-to-be-used basis, w.e.f. from 06th January, 2010. Thereafter, sometime in 2012, it commenced its business activities viz. sale of eyewear such as branded contact lens, sunglasses and spectacles, under the said mark. He contends that Appellant has been using the subject mark since at least 2012 and it has acquired a secondary meaning. Senior Examiner has failed to consider the documents placed on record in support of above-noted assertions.
3. Heard counsel for parties. The impugned order does not take note of the above-noted aspects. Appellant possesses registration of a similar trademark [ ] in class 10, but there is no discussion or reference to its prior registration of similar mark. Mr. Harish Vaidyanathan Shankar, counsel for Respondent, states that Appellant did not bring the factum of prior registration in class 10 to the notice of the Registry in its reply dated 20th April, 2017 to objections raised in examination report. As regards the documents depicting use of mark and attainment of secondary meaning, he states that same were not produced before the Registry. Mr. Kumar strongly opposes this contention and states that Appellant had submitted an affidavit of prior use attaching therewith several documents such as invoices, schreenshots of its website, social media accounts etc. to Signature Not Verified Digitally Signed By:SAPNA SETHI Signing Date:13.12.2022 11:02:20 demonstrate use of subject mark, at least since 2016. Be that as it may, Appellant has a registration of "LensBazaar" as part of its registered device mark under class 10, which should have been taken into consideration.
4. Further, "LensBazaar", consisting of two words - "Lens" and "Bazaar" joined together, is a coined word. These two words individually, have a dictionary meaning, but their combination does not seem to have an instant or automatic connection to the nature, kind or quality of products sold thereunder and cannot be held to be descriptive, running afoul of Section 9(1)(b) of the Act (the sole ground for rejection of application). Further, it appears that Appellant has been continuously using the subject mark for a considerable time, and thus, should be afforded an opportunity to demonstrate its distinctiveness/ use before the Respondent.
5. Accordingly, impugned order dated 17th December, 2021 is set aside and Respondent is directed to proceed for registration of Appellant's application for mark. Let advertisement of subject mark be carried out within a period of three months from today. In case there is any opposition to the said application, the same shall be decided on its own merits uninfluenced with the above observations. It is however clarified that Appellant's rights in subject mark shall be restricted to "LensBazaar" as a combination of "Lens" and "Bazaar", and no exclusive rights in either of the two words, separately or individually, shall vest in the Appellant. Respondent shall reflect this disclaimer at the time of advertisement of Signature Not Verified Digitally Signed By:SAPNA SETHI Signing Date:13.12.2022 11:02:20 subject mark and also if subject mark ultimately proceeds for registration.
6. The present appeal is disposed of along with pending applications.
7. The Registry is directed to supply a copy of order to Respondent - Registrar of Trademarks at [email protected] for compliance.
SANJEEV NARULA, J DECEMBER 7, 2022/ak Signature Not Verified Digitally Signed By:SAPNA SETHI Signing Date:13.12.2022 11:02:20