Delhi High Court - Orders
Gkhk Foods Private Limited vs The Registrar Of Trade Marks on 14 December, 2022
Author: Sanjeev Narula
Bench: Sanjeev Narula
$~4
* IN THE HIGH COURT OF DELHI AT NEW DELHI
+ C.A.(COMM.IPD-TM) 24/2021
GKHK FOODS PRIVATE LIMITED ..... Appellant
Through: Mr. Aayushmaan Gauba and Ms.
Gunjan Chhabra, Advocates.
versus
THE REGISTRAR OF TRADE MARKS ..... 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
% 14.12.2022
1. The present appeal under Section 91(1) of the Trademarks Act, 1999 [hereinafter, 'the Act'] is directed against order dated 06th July, 2020 passed by Senior Examiner of Trade Marks Registry [hereinafter 'Impugned Order'], refusing Appellant's trademark application no. 3638343 in class 43 for registration of label for "Services for providing food, drink and temporary accommodation, catering services, restaurants, bar services, snacks bars, cafes, self-service restaurant, food courts, food and beverages outlets, fine dining restaurants and diner's club", on a proposed-to-be-used basis [hereinafter 'subject mark'].
Signature Not Verified C.A.(COMM.IPD-TM) 24/2021 Page 1 of 5 Digitally Signed By:SAPNA SETHI Signing Date:23.12.2022 16:07:302. The Impugned Order reads as under:
" THE TRADE MARKS ACT, 1999 IN THE MATTER OF Application No. 3638343 for registration of a trade mark THE BBQ COMPANY filed by GKHK FOODS PRIVATE LIMITED.
आदे श / O R D E R Above application has been filed for registration of the trademark THE BBQ COMPANY on 19/09/2017 which was examined on 12/10/2017 and examination report was communicated to the applicant at his address for service. A reply to the office objection(s) had been filed on behalf of the applicant but the same was not found satisfactory and the application was set down for hearing and eventually hearing took place before me on 23/01/2020.
Ayushman Attorney appeared before me and made his submissions. I have heard arguments and gone through the records.
The mark applied for registration is identical with /similar to earlier trademarks on record, as mentioned in the Examination report and by similarity of marks as well as similarity of goods and services covered under such marks, there exists a likelihood of confusion in the mind of public. As such the registration of the mark is objectionable under Section 11(1) of the Trade Marks Act 1999.
Section 11: Similar, valid mark with similar classification vide application no. 2390222 is valid Up to 05/09/2022 is already on record. The applicant failed to establish as to why the similar mark is adopted by the applicant. The applicant Trademark filed on proposed to be used basis and date of application is filed on 19/09/2017. The mark applied for registration is similar with earlier trademark on records, as mentioned in the examination report and by similarity of mark as well as similarity of services covered under such mark, there exists a likelihood of confusion in the mind of public. Objection under section (11) sustained.
Proposed to be used: The Trademark filed on proposed to be used basis.
After perusal of all the documents on record and submission made by the applicant/ authorised agent it is concluded that applied mark is not registrable because of the reason stated as above. Hence application no 3638343 cannot be accepted and refused accordingly.
िदनां क/Dated: 06 July 2020.
(AASHISH KUMAR PANDEY) EXAMINER OF TRADEMARKS (Authorised under section 3(2) of the Act)"
Signature Not Verified C.A.(COMM.IPD-TM) 24/2021 Page 2 of 5 Digitally Signed By:SAPNA SETHI Signing Date:23.12.2022 16:07:303. Conflicting marks cited in the Examination Report, basis which registration has been refused under Section 11(1) of the Act, are reproduced as under:
4. Mr. Aayushmaan Gauba, counsel for Appellant, makes the following submissions:
(i) The first conflicting mark - 'BBQ' (a word mark under trademark application no. 1583745 in class 42), was valid upto 5th July 2017, and had thus lapsed as on date of hearing of the Impugned Order.
However, he candidly states that notice in Form O-3 (under Rule 64 of the Trade Marks Rules 2002 r/w Section 25 of the Act) has been sent by the Registry to the proprietor(s) of the said mark.
(ii) Similarly, the second cited mark - 'BBQ Spicy Burger (device mark under trademark application no. 2390222 in class 43) has also lapsed during pendency of the present appeal.
(iii) Regardless of the above, two marks, on comparison, with the subject Signature Not Verified C.A.(COMM.IPD-TM) 24/2021 Page 3 of 5 Digitally Signed By:SAPNA SETHI Signing Date:23.12.2022 16:07:30 mark are entirely dissimilar.
5. Mr. Harish Vaidyanathan Shankar, counsel for Respondent, on the other hand, argues that mark applied for has a prominent feature 'BBQ', which is also found in the cited conflicting marks, and therefore, application has been rightly rejected.
6. Mr. Gauba has also referred to the other mark which were cited when trademark application no. 2390222 was applied for registration. The same list contains several marks, all of which use 'BBQ' as part of their devices, written in different styles. This, he states, shows that it is possible for various marks containing the word 'BBQ' to coexist.
7. The court finds merit in the argument of the Appellant. In the opinion of the court, since two comparative marks have lapsed, there is a change in circumstance, which must be taken into account. Further, Court finds merit that cited devices marks, on comparison, have several dissimilarities, although 'BBQ' is a common feature. "BBQ', being a commonly used short form of 'barbeque', when used as part of a device, has to be seen as a whole, which reads as 'The bbq Company'. The short form of barbeque is written in lower case as 'bbq', and the device, seen as whole, is distinctive.
8. In view of the above, appeal is allowed with following directions: -
(i) Impugned order dated 06th July, 2020 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.Signature Not Verified C.A.(COMM.IPD-TM) 24/2021 Page 4 of 5 Digitally Signed By:SAPNA SETHI Signing Date:23.12.2022 16:07:30
(v) The rights in subject mark shall be restricted to as depicted above.
(vi) It is clarified the subject mark shall not grant any exclusive rights in the words, "BBQ", "bbq", or 'Company' separately or individually.
This disclaimer shall be reflected in the trade marks journal at the time of advertisement if the subject mark ultimately proceeds for registration.
9. With the above directions, the appeal is disposed of along with pending application(s), if any.
10. Registry is directed to supply a copy of the present order to the Trademark Registry at <[email protected]> for compliance.
SANJEEV NARULA, J DECEMBER 14, 2022 d.negi Signature Not Verified C.A.(COMM.IPD-TM) 24/2021 Page 5 of 5 Digitally Signed By:SAPNA SETHI Signing Date:23.12.2022 16:07:30