Bombay High Court
Hasmukhrai And Co vs Registrar Of Trade Marks on 24 June, 2024
Author: R.I. Chagla
Bench: R.I. Chagla
2024:BHC-OS:9867
29-commpl-13488-2024.doc
jsn
IN THE HIGH COURT OF JUDICATURE AT BOMBAY
Digitally signed
JITENDRA
SHANKAR
by JITENDRA
SHANKAR
NIJASURE
Date:
ORDINARY ORIGINAL CIVIL JURISDICTION
NIJASURE 2024.07.06
14:56:03
+0530 IN ITS COMMERCIAL DIVISION
COMM MISCELLANEOUS PETITION (L) NO.13488 OF 2024
Hasmukhrai and Co. ...Petitioner
Versus
Registrar of Trade Marks ...Respondents
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Hiren Kamod, Nishad Nadkarni, Aasif Navodia, Khushboo
Jhunjhunwala, Rakshita Singh, Riya Karkera and Jaanvi Chopra i/b.
Khaitan and Co. for the Petitioner.
Shehnaz V. Bharucha for the Respondents.
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CORAM : R.I. CHAGLA J.
DATE : 24TH JUNE, 2024
ORDER :
1. By this Commercial Miscellaneous Petition, the Petitioner has sought setting aside of the impugned Order dated 18th January, 2024 passed by the Respondent which is annexed at Exhibit A to the Petition.
2. Mr. Hiren Kamod, the learned Counsel for the Petitioner has submitted that the impugned Order is a cryptic order and there is 1/5 ::: Uploaded on - 06/07/2024 ::: Downloaded on - 14/07/2024 04:30:11 ::: 29-commpl-13488-2024.doc non consideration of the submissions of the Petitioner. There is a mere finding that the applied trademark 'NATURE'S WEALTH FOR YOUR HEALTH' is inherently incapable of distinguishing the goods of one person from those of another person and devoid of any distinctive character. Further, that the words used in the applied trademark are too common to be monopolized by individual. Accordingly, it has been held that the registration of the applied trademark is refused under Section 9(1) (a) of the Trade Marks Act, 1999.
3. Mr. Hiren Kamod has submitted that the examination report had raised the objection under Section 9(1) (a) of the Act viz. that applied mark is a common surname or a non distinctive geometrical figure and as such it is not capable of distinguishing the goods or services of one person from those of others. He has submitted that there is a reply to the examination report dated 5th August, 2021 wherein the Respondent has expressly stated that the applied mark is a unique combination of words adopted by the Applicant in respect of its goods and the said mark is exclusive to the Applicant. Further, it is stated that the applied mark is not a surname or geometrical figure and in fact is not associated with any products 2/5 ::: Uploaded on - 06/07/2024 ::: Downloaded on - 14/07/2024 04:30:11 ::: 29-commpl-13488-2024.doc belonging to any other entity either as a trademark or otherwise. The Petitioner had submitted that the applied mark ought to be considered as a whole and ought not to be judged on the basis of individual components / words forming part thereof for which no exclusive rights are being claimed.
4. Mr. Hiren Kamod has submitted that these submissions have not been considered in the impugned order and that the matter be remanded back for de novo hearing by the Respondent and consideration of these submissions including material on record.
5. Mrs. Shehnaz Bharucha the learned Advocate for the Respondent has opposed the Petition and supported the impugned order.
6. Having considered the submissions on record as well as perusing the impugned Order, in my view the impugned is nothing but a cryptic order where there is failure to refer to the submissions of the Petitioner in response to the examination report and / or to consider the same.
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7. This Court had held in the case of I Am The Ocean, LLC Vs. Registrar of Trade Marks1 that there are series of matters which have come up where there have been submissions and documents in support of the Petitioner's case for registration of the Trade Marks in the replies which have been filed before the Registrar of Trade Marks. The least that was expected of the Officer adjudicating the application is to peruse the reply and extend to it the bare courtesy of application of mind. There is complete abdication by the Registrar of Trade Marks / Senior Examiner of Trade Marks in quasi judicial functions vested in them by the Trade Marks Act and Trade Marks Rules. The impugned order reduces Section 18(5) of the Trade Marks Act to a redundancy.
8. In that view of the matter, the impugned order dated 18th January, 2024 is set aside and the matter is remanded back to the Respondent for de novo hearing of the Petitioner proper consideration of the submissions of the Petitioner including in the reply to the examination report and material in support thereof as well as any further submissions the Petitioner may canvass before the Respondent.
1 Interim Application (L) No.4264 of 2023 in Commp (L) No.3899 of 2023 dated 14th June, 2023.
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9. The de novo hearing shall be concluded within a period of eight weeks from the date of uploading of this Order, with the passing of a reasoned order.
[ R.I. CHAGLA J. ] 5/5 ::: Uploaded on - 06/07/2024 ::: Downloaded on - 14/07/2024 04:30:11 :::