Bombay High Court
Resintech Inc vs The Senior Examiner Of Trade Mark ... on 3 July, 2023
Author: R.I. Chagla
Bench: R.I. Chagla
2023:BHC-OS:6103
21-COMMPL-9697-23.doc
Sharayu Khot.
IN THE HIGH COURT OF JUDICATURE AT BOMBAY
ORDINARY ORIGINAL CIVIL JURISDICTION
COMMERCIAL MISCELLANEOUS PETITION (L) NO. 9697 OF 2023
Resintech Inc ...Petitioner
Versus
The Senior Examiner of Trade Marks ...Respondent
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Mr. Hiren Kamod, Mr. Anis Patel, Shadab Peerzade i/by Munir
Merchant for the Petitioner.
Ms. Carina Xavier for the Respondent.
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CORAM : R.I. CHAGLA J
DATE : 3 July 2023
ORDER :
1. By this Commercial Miscellaneous Petition, the Petitioner is seeking setting aside of the impugned order dated 30th October 2021 passed by the Respondent in the Trademark Application No. IRD1-4110637.
2. Mr. Kamod, learned Counsel appearing for the Petitioner has referred to the impugned order. He has submitted that the Senior 1/4 ::: Uploaded on - 06/07/2023 ::: Downloaded on - 07/07/2023 22:21:55 ::: 21-COMMPL-9697-23.doc Examiner of Trade Marks in the impugned order has merely referred to the provisions of Sections 9(1)(a) and 9(1)(b) of the Trade Marks Act, 1999 in arriving at a finding that the applied mark is highly descriptive as it refers to functional aspect and is directly referring to quality of goods as specified in the application of goods. The conclusion arrived is that the applied marked is not registrable.
3. Mr. Kamod has submitted that the Reply to the examination Report dated 5th June 2019 has not been considered by the Senior Examiner of Trade Marks in passing the impugned order. There were various submissions made including the fact that the Applicant is the Registered Proprietor of the trade mark/device mark "RESINTECH" in major countries and the said trade mark 2037210 has been registered in USA. Further, submission made is that the applied mark had been adopted by the Applicant by co-joining of word "RESIN" and "TECH" and the combination of the words together "RESINTECH" by itself is distinctive of the goods of the Applicant. The Respondent has itself granted protection over the earlier identified trade mark application RESINTECH Ld. of the Petitioner without raising any objection under Section 9 of the Trade Marks Act, 1999 to proceed for registration. He has submitted that 2/4 ::: Uploaded on - 06/07/2023 ::: Downloaded on - 07/07/2023 22:21:55 ::: 21-COMMPL-9697-23.doc there is no independent application of mind on the part of the Senior Examiner of Trade Marks to these submissions which were placed on record.
4. Mr. Kamod has further submitted that neither the notification of the provisional refusal of protection nor the impugned order has relied upon any cited marks. Accordingly, he has submitted that the impugned order is required to be set aside and remanded back for consideration of the submissions of the Petitioner and the material on record.
5. The learned Counsel appearing for the Respondent states on instructions that the matter may be remanded back for fresh consideration by the Senior Examiner of Trade Marks.
6. Accordingly, the impugned order is set aside and remanded back to the Senior Examiner of Trade Marks for de novo hearing of the Petitioner and thereafter passing of reasoned order after considering the submissions of the Petitioner and/or material on record which shall be reflected in the fresh order to be passed by the Senior Examiner of the Trade Marks. This exercise shall be carried 3/4 ::: Uploaded on - 06/07/2023 ::: Downloaded on - 07/07/2023 22:21:55 ::: 21-COMMPL-9697-23.doc out within a period of 12 weeks from the date of this order.
7. The Commercial Miscellaneous Petition is accordingly, disposed of.
[R.I. CHAGLA J.] 4/4 ::: Uploaded on - 06/07/2023 ::: Downloaded on - 07/07/2023 22:21:55 :::