Bombay High Court
X Development Llc vs The Registrar Of Trademarks on 21 June, 2024
Author: R.I. Chagla
Bench: R.I. Chagla
2024:BHC-OS:9045
Digitally
signed by
WAKLE
WAKLE MANOJ
MANOJ JANARDHAN
JANARDHAN Date:
2024.06.24
11:13:05
35-COMMP-1304-2022.doc
+0530
Manoj
IN THE HIGH COURT OF JUDICATURE AT BOMBAY
ORDINARY ORIGINAL CIVIL JURISDICTION
IN ITS COMMERCIAL DIVISION
COMMERCIAL MISCELLANEOUS PETITION NO.1304 OF 2022
WITH
INTERIM APPLICATION (L) NO.17268 OF 2023
Mineral Earth Sciences LLC ...Petitioner
Versus
The Registrar of Trade Marks ...Respondent
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Adv. Bimal Rajashekhar i/by Rishi Murarka, for the Petitioner.
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CORAM : R.I. CHAGLA, J.
DATE : 21ST JUNE, 2024.
ORDER :
1. There is an Interim Application (L) No. 17268/2023 filed by one Mineral Earth Sciences LLC to amend the petition to change the name of the Petitioner in the petition from X Development LLC to itself. This amendment is being sought in view of the trademark assignment agreement dated 1 January 2023 between Mineral Earth Sciences LLC and X Development LLC. The interim application is allowed. Amendment to be carried out during the course of the day. Reverification dispensed with. By virtue of this amendment, Mineral 1/5 ::: Uploaded on - 24/06/2024 ::: Downloaded on - 13/07/2024 01:23:52 ::: 35-COMMP-1304-2022.doc Earth Sciences LLC is now the Petitioner in the petition.
2. By this Commercial Miscellaneous Petition, the Petitioner is seeking to set aside the Order dated 5 November 2021 passed by the Examiner of Trade Marks Registry, Mumbai by which the application for registration of the subject mark "MINERAL" in classes 7,9,11,12,38,42 has been rejected under section 9(1)(a) and 11 of the Trade Marks Act.
3. Mr. Bimal Rajasekhar, learned Counsel for the Petitioner, submits that the mark "MINERAL" was applied for in relation to a computational agricultural product that uses an AI based technology for sustainable food production and farming. The project utilizes a robotic solar powered plant buggy that autonomously crosses a field and examines plants with an array of cameras and sensors. In conjunction with artificial intelligence and external inputs such as satellite, weather and soil data, the robotic plant buggy can identify patterns and issues with crops.
4. Mr. Bimal Rajasekhar, submits that the impugned order of 5 November 2021 rejecting the application for registration of the said mark is unreasoned. It only reproduces section 9(1)(a) of the 2/5 ::: Uploaded on - 24/06/2024 ::: Downloaded on - 13/07/2024 01:23:52 ::: 35-COMMP-1304-2022.doc Trade Marks Act, 1999, i.e. it simply states that the mark is "devoid of any distinctive character, that is to say, not capable of distinguishing the goods or services of one person from those of another person" . He states that the order proceeds to refuse registration of the applied mark, without giving any reasons as to how the section is attracted.
5. Mr. Bimal Rajasekhar submits that the Petitioner had made detailed submissions before the Examiner of Trade Marks on how the subject mark "MINERAL" does not fall foul of section 9(1)(a). It is an arbitrary mark which does not convey any meaning as to the goods and services offered by it and further, is inherently distinctive and capable of registration, since it is capable of distinguishing the Petitioner's services from that of another person.
6. He further submits that the Petitioner had made detailed submissions on how the mark was not liable to be rejected under section 11(1)(a) either. Each of the alleged prior cited marks had been specifically dealt with by the Petitioner and submissions had been made as to how those marks could not prevent the subject mark "MINERAL" from being registered.
7. Mr. Bimal Rajasekhar submits that several authorities 3/5 ::: Uploaded on - 24/06/2024 ::: Downloaded on - 13/07/2024 01:23:52 ::: 35-COMMP-1304-2022.doc were also relied on by the Petitioner before the Examiner, none of which have been considered. He accordingly submits that the impugned order is liable to be set aside and the matter remanded for de novo hearing of the Petitioner.
8. I find merit in the Petitioner's submissions. Detailed submissions have been placed on record before the Examiner on the inherent arbitrariness of the Petitioner's applied for mark MINERAL, which have to be considered as a whole. Several other submissions also appear to have been made. The order ex facie does not consider any of the submissions, nor the authorities which have been relied on by the Petitioner.
9. This Court has already had occasion to consider the validity of orders such as these, which are passed in an unreasoned manner. Mr. Rajasekhar draws my attention to the order dated 6 October 2021 in Metso Outotec Corporation v. Registrar of Trade Marks, the order dated 5 December 2022 in Taramis Labs Pvt. Ltd. v. Registrar of Trade Marks and the order dated 14 June 2023 in I Am The Ocean LLC v. Registrar of Trade Marks. The reasoning in these orders squarely apply here. Suffice to say that the impugned order can, in no view of the matter, be stated to be a reasoned order. The 4/5 ::: Uploaded on - 24/06/2024 ::: Downloaded on - 13/07/2024 01:23:52 ::: 35-COMMP-1304-2022.doc finding that the subject mark is not being capable of registration should have been supported by cogent reasons rather than a mere reproduction of the section which alleges that the subject mark falls foul of.
10. Accordingly, the order dated 5 November 2021 passed by the Respondent/ Examiner of Trade Marks is set aside and the matter remanded for de novo hearing of the Petitioner by considering the submissions and material on record in support of the Petitioner's case in the Reply and Written Submissions and thereafter giving a reasoned order. This exercise shall be carried out by the Respondent/ Examiner of Trade Marks within a period of eight weeks from the date of this Order being communicated to them.
11. The fresh Order passed by the Respondent/Examiner of Trade Marks shall be communicated to the Petitioner within a period of two weeks from its passing.
12. The petition is disposed of in the above terms. There shall be no order as to costs.
[R.I. CHAGLA, J.] 5/5 ::: Uploaded on - 24/06/2024 ::: Downloaded on - 13/07/2024 01:23:52 :::