Delhi High Court - Orders
Karim Hotels Pvt. Ltd vs The Registrar Of Trademarks on 9 May, 2022
Author: Prathiba M. Singh
Bench: Prathiba M. Singh
Signature Not Verified
Digitally Signed
By:DEVANSHU JOSHI
Signing Date:10.05.2022
17:06:30
$~4
* IN THE HIGH COURT OF DELHI AT NEW DELHI
+ C.A. (COMM.IPD-TM) 16/2021
KARIM HOTELS PVT. LTD. ..... Plaintiff
Through: Mr. Amique Khalid & Ms. Ishita
Mangla, Advocates. (M:8447805456)
versus
THE REGISTRAR OF TRADEMARKS ..... Defendant
Through: Mr. Harish V. Shankar, CGSC with
Ms. S. Bushra Kazim, Mr. Srish
Kumar Mishra and Mr. Mehlawat
Sagar, Advocates. (M:9810788606)
CORAM:
JUSTICE PRATHIBA M. SINGH
ORDER
% 09.05.2022
1. This hearing has been done through hybrid mode.
2. The present appeal under section 91 of the Trade Marks Act, 1999 (hereinafter "Act") has been filed by the Appellant challenging the order dated 8th January, 2019. Vide the said order, the Senior Examiner of Trade Marks has rejected the trademark application no. 2894259 under class 29 for the following mark:
C.A.(COMM.IPD-TM) 16/2021 Page 1 of 6 Signature Not Verified Digitally Signed By:DEVANSHU JOSHI Signing Date:10.05.2022 17:06:303. The said application has been rejected by the Senior Examiner of Trade Marks by applying the provisions of Sections 9 & 11 of the Act. The Appellant, thereafter, requested for the reasons for rejection, which were communicated to it on 8th March, 2019. The reasons communicated are extracted as under:
"ADV. AMAL APPEARED,
ARGUED/MADE SUBMISSION, HEARD
CHECKED APPLICATION, IT APPEARED THAT, REPLY IS NOT SATISFACTORY AS TO EXAMINATION REPORT, USER AFFIDAVIT ALONG WITH EVIDENCE (LIKEWISE;
INVOICES, PUBLISHING MATERIAL) IN SUPPORT DOES NOT FILED, AND REGISTERED CLAIMED AS BELONG TO APPLICANT,BUT NO NOC FOUND ON RECORD,MARK IS NOT DISTINCTIVE ALSO DESCRIPTIVE IN NATURE SO OBJ.U/S 9 SUSTAIN,HENCE REFUSED.
* 9 - Absolute grounds for refusal of registration. * 9(1)(a) - The trade 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:
* 9(1)(b) - The Trade Mark consist exclusively of marks or indications which serve in trade to designate the kind, quality, quantity, intended purpose, values, geographical origin or the time of production of the goods or rendering of the service or other characteristics of the goods or services. * 11(1)(a)- Relative grounds for refusal of registration- The said trade Mark is refused for registration because of its identity with an earlier trade mark and similarity of goods or services covered by the trade mark; or"C.A.(COMM.IPD-TM) 16/2021 Page 2 of 6 Signature Not Verified Digitally Signed By:DEVANSHU JOSHI Signing Date:10.05.2022 17:06:30
4. The present appeal was originally filed before the The Intellectual Property Appellate Board (IPAB), Delhi. However, after the enactment of Tribunal Reforms Act, 2021 the same has been transferred to this Court.
5. Ld. counsel for the Appellant submits that several marks consisting of the word 'KARIM/ KARIM'S' and variations thereof have already been registered by the Registrar of Trademarks in favour of the Appellant. The Appellant owns more than 40 registrations for different variations of the marks 'KARIM', 'KARIM'S' and 'KAREEM'.
6. Issue notice. Notice is accepted by Mr. Harish V. Shankar, ld. CGSC.
7. Ld. counsel for the Respondent submits that the mark in question contains various descriptive matter including the name of the dishes for which the Appellant cannot claim any monopoly.
8. Heard the ld. Counsel for the parties and perused the record. It is noticed from the record that apart from the various variants of the mark 'KARIM'/ 'KARIM'S', for which the Appellant has been granted trademark registration, one registration relates to an identical mark in class 30. There is no doubt in the mind of the Court that the long user of the mark 'KARIM'/ 'KARIM'S' by the Appellant as also by its predecessors in interest, vests enormous goodwill in the Appellant. The Appellant company is stated to have been started by the third generation of Mr. Haji Karimuddin- who coined, conceived, and adopted the trade name 'KARIM' and opened the first 'KARIM' restaurant in the year 1913. Ld. counsel for the Appellant submits that the current promoters of the Appellant are, thus, the great grandsons of the original founder.
9. The reasoning given by the Registrar of Trademarks in rejecting the trade mark application of the Appellant is not sustainable in the opinion of C.A.(COMM.IPD-TM) 16/2021 Page 3 of 6 Signature Not Verified Digitally Signed By:DEVANSHU JOSHI Signing Date:10.05.2022 17:06:30 the Court, as an NOC is being sought. It is not clear as to who is to give the NOC. Presumably, the Registrar's order is silent but may be intending to communicate that NOC ought to be issued by the founder. The Reply to the examination report is stated to be not satisfactory by the Senior Examiner. However, the Senior Examiner has clearly ignored all the granted registrations in favour of the Appellant including the one bearing no.2894260, which is registered in class 30 for an identical mark. The details of the said trademark are as under:
TM Application 2894260
No.
Class 30
Date of 06/02/2015
Application
User Details 10/01/2015
TM Applied for KARIM'S THE MUGHAL
CHEF AKBARIMURGH
MASALA
Goods and COFFEE, TEA, COCOA
services details AND ARTIFICIAL COFFEE;
RICE; TAPIOCA AND
SAGO; FLOUR AND
PREPARATIONS MADE
FROM CEREALS; BREAD,
PASTRY AND
CONFECTIONERY;
EDIBLE ICES; SUGAR,
HONEY, TREACLE; YEAST,
BAKTNGPOWDER; SALT;
MUSTARD; VINEGAR,
SAUCES (CONDIMENTS);
SPICES; ICE.
Restrictions THIS IS SUBJECT TO
ASSOCIATION WITH
C.A.(COMM.IPD-TM) 16/2021 Page 4 of 6
Signature Not Verified
Digitally Signed
By:DEVANSHU JOSHI
Signing Date:10.05.2022
17:06:30
REGISTERED/PENDING
REGISTRATION No.
2051017, 2051021, 2051023,
2051026. No exclusive right
over the term & Quot;
AKBARI MURGH MASALA
& Qout; AND OTHER
DESCRIPTIVE MATTER
APPEARING ON LABEL.
10. A perusal of the examination report also reveals that the cited marks also belong to the Appellant. Moreover, in the Reply to the examination report, the Appellant has clearly stated that the Appellant company was established by the great grandsons of Haji Karimuddin, who had originally coined and adopted the mark 'KARIM'/KARIM'S. However, all the submissions made in the reply by the Appellant have been ignored by the Senior Examiner of Trade Marks including the turnover figures, profit figures and other details provided by the Appellant.
11. Considering the long and extensive use of the mark 'KARIM'/KARIM'S and the various registrations granted in favour of the Appellant, the impugned order dated 8th January, 2019 passed by the Senior Examiner of Trade Marks is not sustainable and the same is set aside.
12. The application no.2894259 is directed to proceed for registration with the same conditions as applicable to application no.2894260. The same is extracted hereinbelow:
"THIS IS SUBJECT TO ASSOCIATION WITH REGISTERED/PENDING REGISTRATION NO..2051017, 2051021, 2051023, 2051026. NO EXCLUSIVE RIGHT OVER THE TERM AKBARI MURGH MASALA AND OTHER DESCRIPTIVE MATTER APPEARING ON LABEL.."C.A.(COMM.IPD-TM) 16/2021 Page 5 of 6 Signature Not Verified Digitally Signed By:DEVANSHU JOSHI Signing Date:10.05.2022 17:06:30
13. The Registrar of Trademarks is directed to advertise the mark within three months. The application shall, thereafter, proceed in accordance with law. If there are any oppositions filed against the subject mark, the observations made in this order shall not affect the said oppositions.
14. The appeal is disposed of in the above terms.
15. Let a copy of this Order be communicated to the Registrar of Trade marks through Mr. Harish V. Shankar ld. CGSC.
PRATHIBA M. SINGH, J.
MAY 9, 2022/dk/sk C.A.(COMM.IPD-TM) 16/2021 Page 6 of 6