Bombay High Court
Seiwa Kasei Co. Ltd vs Registrar Of Trade Marks on 14 June, 2024
Author: R.I. Chagla
Bench: R.I. Chagla
2024:BHC-OS:8730
9-commpl-6676-2024.doc
jsn
Digitally
signed by
IN THE HIGH COURT OF JUDICATURE AT BOMBAY
JITENDRA
JITENDRA
SHANKAR
NIJASURE
SHANKAR
NIJASURE
Date:
ORDINARY ORIGINAL CIVIL JURISDICTION
2024.06.15
16:33:56
+0530 IN ITS COMMERCIAL DIVISION
COM MISCELLANEOUS PETITION (L) NO.6676 OF 2024
Seiwa Kasei Co. Ltd. ...Petitioner
Versus
The Registrar of Trade Marks ...Respondent
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Rohan Kadam, Rucha Vaidya, Pooja Gupta and Suhrita Majumdar
i/b. Suvarna Joshi for the Petitioner.
None for the Respondent.
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CORAM : R.I. CHAGLA J.
DATE : 14TH JUNE, 2024
ORDER :
1. By this Commercial Miscellaneous Petition, the Petitioner is seeking setting aside of the impugned Orders dated 25th November, 2021 and 18th May, 2022 passed by the Respondent in Application No.IRDI-4998621 (IR No.15947000).
2. Mr. Rohan Kadam appearing for the Petitioner has referred to the Affidavit of Service dated 13th June, 2024 which has 1/8 ::: Uploaded on - 15/06/2024 ::: Downloaded on - 25/06/2024 15:07:48 ::: 9-commpl-6676-2024.doc been filed and which shows that the Respondent has been served with the Petition by the email dated 3rd April, 2024 which is annexed at Exhibit A to the Affidavit of Service. Further, he has stated that the Respondent has been intimated of today's date of listing of the matter and he undertakes to file Affidavit of Service within a period of one week from today to that effect. He has submitted that inspite of service, the Respondent has failed to make an appearance.
3. Mr. Kadam has submitted that the Petitioner is a renowned manufacturer of cosmetic ingredients. The Petitioner is incorporated under the laws of Japan. The Petitioner coined the mark "PHYTOCUTICLE" being a cuticle-care ingredient of plant origin. The Petitioner has obtained trademark registration of its subject mark "PHYTOCUTICLE" in Japan on 2nd March, 2021.
4. Mr. Kadam has submitted that the Petitioner filed an International Application No.1594700 for the trade mark "PHYTOCUTICLE" with the International Bureau of World Intellectual Property Organization ("WIPO") on 15th April, 2021. The said Application was serialized in India as TM Application No.IRDI- 4998621 for registration of the trade mark (device) 2/8 ::: Uploaded on - 15/06/2024 ::: Downloaded on - 25/06/2024 15:07:48 ::: 9-commpl-6676-2024.doc "PHYTOCUTICLE" in Class I on 3rd June, 2021.
5. Mr. Kadam has submitted that the Petitioner was granted registration of its trade mark "PHYTOCUTICLE" in 11 countries including the United States, Australia, France, Germany, United Kingdom, Italy and Korea.
6. The Petitioner's trademark Application was provisionally refused by the Respondent on 10th June, 2021 on the ground that the mark was non-distinctive under Section 9(1) (a) of the Trade Marks Act, 1999.
7. Mr. Kadam has submitted that the Petitioner responded to the Respondent's notice of provisional refusal on 20th July, 2021 and 13th November, 2021 giving full particulars namely that the subject mark is a newly coined term and a fanciful adoption by the Petitioner and is therefore distinctive. Further, the inherent distinctiveness of the subject trade mark extended its exclusive association with the Petitioner. The registration of the subject trade mark was not contrary to Section 9(1) (a) of the Act and is capable of distinguishing the goods or services of one person from those of 3/8 ::: Uploaded on - 15/06/2024 ::: Downloaded on - 25/06/2024 15:07:48 ::: 9-commpl-6676-2024.doc another person. The subject trade mark has also been registered in Australia, China, Spain and United Kingdon.
8. Mr. Kadam has submitted that the Petitioner's trade mark application was mechanically refused by the Respondent on 25th November, 2021 by a mechanical citation of Section 9(1) (a) of the Act and a summary conclusion "that the mark is well established within the public domain and in common use', without substantiating the same and / or providing any basis for the same.
9. Mr. Kadam has thereafter referred to the application of the Petitioner on 24th December, 2021 to review the Order dated 25th November, 2021 which was summarily dismissed considered by the Senior Examiner vide a non-speaking order dated 18th May, 2022. He has submitted that there is no basis for the conclusion arrived at in the impugned orders and accordingly, he has sought for setting aside of the same.
10. Mr. Kadam has submitted that the review order though dated 18th May, 2022 was merely uploaded on the Registrar's website. It was never communicated to the Petitioner as mandated 4/8 ::: Uploaded on - 15/06/2024 ::: Downloaded on - 25/06/2024 15:07:48 ::: 9-commpl-6676-2024.doc under Rule 111 of the Trademarks Rules, 2017. He has submitted that the Petitioner only learnt of the review order on 18th January, 2024 and the Petition has been expeditiously filed on 24th January, 2024. Thus, there there is no delay in filing of the Petition.
11. Having considered the submissions, in my view the impugned orders passed by the Respondent are bereft of reasons as well as non consideration of the various contentions of the Petitioners supported by documents as to the distinctiveness of the subject trade mark. The impugned Orders are cryptic orders and have no basis for arriving at summary conclusion that the subject trade mark is well established within the public domain and common in use.
12. The Respondent has inspite of service of the papers and proceedings and also intimation of today's date when the matter is listed has failed to make an appearance. There are a series of orders passed by this Court, criticizing such cryptic orders passed by the Respondent without consideration of the contentions of the Petitioner and / or giving a finding on the same. The Respondent should be mindful of the fact that it is exercising quasi judicial power and that such non-speaking or cryptic orders are unacceptable. 5/8 ::: Uploaded on - 15/06/2024 ::: Downloaded on - 25/06/2024 15:07:48 :::
9-commpl-6676-2024.doc
13. In view thereof, this is a fit case for setting aside the impugned orders dated 25th November, 2021 and 18th May, 2022 and for remand of the matter to the Respondent for denovo consideration.
14. I further do not find that there is any delay in filing of the present Petition. Particularly, considering Rule 111 of the Trademarks Rules, 2017 which expressly provides for communication of the decision by the Registrar to the person affected. It has been held by the Division Bench of this Court in Institute of Cost Accountants of India Vs. Registrar of Trade Marks and Anr. 1, that mere placing of notice on the website does not constitute compliance of the Rules. Infact, in this case, the Respondent - Registrar of Trademarks had not indicated anything that obliged the Petitioner to inspect the website on a daily basis. Nor did they indicate any rule or practice by which the Petitioner was bound legally to take notice of anything that is posted on the Respondents' websites. The Petitioner was held not to be imputed with the knowledge of the said letter dated 19th September, 2011 as it does not constitute communication of the objection or proposal in writing as required by Rule 38(4) of 1 2013 (3) Mh.L.J. 418.
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9-commpl-6676-2024.doc the Rules. This decision in my view applies to the present case as in the present case also there is mere placing of the decision on the website without communication. The Respondent was bound to to communicate the decision to the Petitioner under the said Rules which he fails to do so. Thus, I do not find any delay in filing of the present Petition.
15. In view thereof, the following order is passed:-
(i) The impugned Orders dated 25th November, 2021 and 18th May, 2022 are set aside and remanded back for denovo hearing of the Petition by the Respondent.
(ii) Needless to state that the matter would not be decided by the officer who has passed the impugned Orders. This will obviate the possibility of any apprehension of predetermination.
(iii) The Officer appointed to determine the Petitioner's case, shall pass reasoned order taking into account all relevant consideration and granting hearing to the Petitioner. The Order shall be passed within a period of 12 weeks from the date of this 7/8 ::: Uploaded on - 15/06/2024 ::: Downloaded on - 25/06/2024 15:07:48 ::: 9-commpl-6676-2024.doc Order.
(iv) It is made clear that the newly appointed officer who shall determine the Petitioner's case, shall consider the case independently and without being influenced by the findings in the impugned Orders.
(v) It is further clarified that this Order has not considered the merits of the Petitioner's application.
(vi) The Commercial Miscellaneous Petition is accordingly disposed of. There shall be no order as to costs.
[ R.I. CHAGLA J. ] 8/8 ::: Uploaded on - 15/06/2024 ::: Downloaded on - 25/06/2024 15:07:48 :::