Calcutta High Court
Yamaha Hatsudoki Kabushiki Kaisha vs Mr. Devender Kumar And Anr on 3 March, 2025
Author: Ravi Krishan Kapur
Bench: Ravi Krishan Kapur
OIP-34
IN THE HIGH COURT AT CALCUTTA
ORIGINAL SIDE
CIVIL APPELLTE JURISDICTION
TMA/5/2021
YAMAHA HATSUDOKI KABUSHIKI KAISHA
VS
MR. DEVENDER KUMAR AND ANR.
Before:
The Hon'ble Justice RAVI KRISHAN KAPUR
Date: 3rd March 2025
Appearance:
Mr. Debnath Ghosh, Sr. Adv.
Mr. Sudhakar Prasad, Adv.
Mr. B. Banerjee, Adv.
Mr. Biswaroop Mukherjee, Adv.
...for appellant.
Mr. N. Singhania, Adv.
...for defendant.
The Court: This appeal is against an order dated 17th March 2021, rejecting
an application seeking registration of the mark R3 in class 12, for motorcycles,
scooters, mopeds, 3 wheel motorcycles, 3 wheel scooters, 3 wheel mopeds and parts
and fittings thereof. The subject application was dated 21st November 2014 and was
numbered as 2847515 on "proposed to be used" basis.
Pursuant to the filing of the above application, a First Examination Report
(FER) dated 13th January 2016 was filed. Subsequently, the respondent authorities
after having conducted searches had on the ground that there was a mark bearing number 2734344 dated 9th May 2014 filed by one Rishi Raheja (individual), refused to grant registration in favour of the appellant.
Upon the First Examination Report (FER) being served on the appellant, the appellant had filed an initial response and subsequently a detailed reply to the FER inter alia, contending that the proposed mark was an associated mark. Thus, on a combined reading of section 2(1)(c) read with section 16(5) of the Trademarks Act, 1999, the application filed by the appellant ought to have been allowed. It was also contended that the appellant was a registered proprietor of a series of alpha numeric marks comprising the letter R, details whereof are provided below: 2
Registration No. Mark Class 1750650 R6 12 1752527 R1 12 2852260 R15 12 2655807 YZR-R3 12 Moreover, the mark R3 has already been registered in different jurisdictions outside India, being Japan, EU, Russia, U.S.A, Canada, Philippines, Thailand, Taiwan, Korea, Hong Kong, Indonesia, Singapore, Vietnam, Malaysia, Brazil, Switzerland, Norway, Turkey, Australia, New Zealand, Argentina, Colombia, Mexico.
It is contended on behalf of the appellant that, the proposed to be registered mark is a word mark, whereas the cited registration R3 auto parts is a device mark having a stylized R logo with a smaller stylized 3 within the rounded hollow of the letter R. In such circumstances, there was no question of there being any similarity or deception with the objected mark. Significantly, the appellant is also the registered proprietor of several alpha numeric marks comprising the letter R and has also obtained registration of the entire series namely "R15, YZF-R3, R1 and R6". In such circumstances, there is no merit in the objection raised by the respondent authorities and the subject application was liable to be allowed.
On behalf of the respondent, it is contended that on the basis of the documents and the objections which had been raised by the private respondent, the conflicting mark was a prior mark which had been pending for registration. The dominant and essential feature of the mark objected was R3. Hence, there was every likelihood for confusion and deception. Hence, in view of the provisions of section 11 of the Act, there are no grounds to interfere with the impugned order.
A serious infirmity in the impugned order is the fact that the same does not deal with nor consider any of the objections which had been raised by the appellant 3 in the objection to the FER. There are also no reasons as to why the proposed mark did not qualify as an associated mark under the Act. The fact that the appellant was already the registered proprietor of a series of alphanumeric marks comprising the letter R has also been ignored. Prima facie, the cited mark 'R3 auto parts' is purely descriptive of the goods and business being carried out by the private respondent. On the contrary, the proposed mark is a word mark and pertains to goods strictly related to a particular class, i.e., scooters, motorbikes, mopeds and parts thereof which are highly specific.
In passing the impugned order, there has been no consideration of the subsisting registrations, in favour of the appellant, details whereof were before the respondent authorities. The order reflects complete non-application of mind and proceeds in a pre-meditated manner.
In view of the above, TMA No. 5 of 2021 stands allowed. The impugned order is set aside.
The matter is remanded to the Controller to consider the application of the appellant afresh in accordance with law after giving both parties a right of hearing. It is made clear that there has been no adjudication on the merits of the case and all questions are left open to be decided afresh by the Controller in accordance with law. The above exercise is to be completed within a period of 2 months from the date of communication of this order to the respondent authorities.
With the above directions, TMA No. 5 of 2021 stands disposed of.
(RAVI KRISHAN KAPUR, J.) SK.