Delhi High Court - Orders
Kohler Co vs Registrar Of Trade Marks on 25 August, 2022
Author: Navin Chawla
Bench: Navin Chawla
$~6
* IN THE HIGH COURT OF DELHI AT NEW DELHI
+ C.A.(COMM.IPD-TM) 31/2021
KOHLER CO. ..... Appellant
Through: Mr.Phillip Abraham & Mr.Manish
Kumar, Advs.
versus
REGISTRAR OF TRADE MARKS ..... Respondent
Through: Mr.Harish Vaidyanathan Shankar,
CGSC with Mr.Srish Kumar Mishra,
Mr.Sagar Mehlawat & Mr.Alexander
Mathai Paikadya, Advs.
CORAM:
HON'BLE MR. JUSTICE NAVIN CHAWLA
ORDER
% 25.08.2022
1. This appeal has been filed by the appellant challenging the order dated 19.03.2019 and 'Statement of Grounds of Decision' under Rule 36(1) of the Trade Marks Rules, 2017 dated 10.04.2019 issued by the Senior Examiner of Trade Marks, rejecting the application no. 2821570 in Class 35 filed by the appellant seeking registration of its mark 'BOLD'.
2. While the impugned order dated 19.03.2019 states that the application has been refused as the trade mark applied is objectionable under Sections 9/11 of the Trade Marks Act, 1999 (in short, 'the Act'), the 'Statement of Grounds of Decision' states that the application has been refused on the ground that the conflicting marks cited in the Examination Report are phonetically similar to the marks applied for by the appellant. Section 9 of the Act is not cited as a ground for rejection of the application of the appellant in the 'Statement of Grounds of Decision'.
3. The learned counsel for the appellant submits that even in the Examination Report, Section 9 of the Act had not been cited by the Signature Not Verified Digitally Signed By:SHALOO BATRA Signing Date:29.08.2022 18:09:44 Examiner of Trade Marks as a ground for refusal of the application for the registration of the trade mark.
4. The learned counsel for the appellant submits that in the Examination Report, eighteen marks had been cited against the appellant. Out of these eighteen, ten cited marks had either been abandoned/ removed/not renewed, while one of the cited marks was of the appellant itself. The remaining seven marks which were cited against the appellant did not relate to the goods/services of the appellant but related to different goods/services. He submits that the learned Examiner of Trade Marks has not considered the similarity of goods/services of the cited marks with that of the appellant. Placing reliance on the judgment of the High Court of Madras in ECO Lean Research & Development A/S v. Intellectual Property Appellate Board, 2011(5) R.A.J 483 (Mad), he submits that this was an important aspect to be considered by the Senior Examiner of Trade Marks, and the same having not been considered, this is a fit case where the impugned order dated 19.03.2019 and the 'Statement of Grounds of Decision' dated 10.04.2019 be set aside and the matter be remanded back to the learned Senior Examiner of Trade Marks for a fresh consideration.
5. Mr.Harish Vaidyanathan Shankar, the learned Central Government Standing Counsel, submits that no ground for interference has been made out by the appellant. The order passed by the learned Senior Examiner of Trade Marks cannot be said to be perverse in any manner.
6. I have considered the submissions made by the learned counsels for the parties. As rightly pointed by the learned counsel for the appellant, Section 9 of the Act was not cited as a ground for rejection of the application of the appellant in the 'Statement of Grounds of Decision'. The same, Signature Not Verified Digitally Signed By:SHALOO BATRA Signing Date:29.08.2022 18:09:44 therefore, need not detain this Court any further.
7. As far as Section 11(1)(a) of the Act is concerned, the same is reproduced hereinunder:-
"11. Relative grounds for refusal of registration.-(1) Save as provided in section 12, a trade mark shall not be registered if, because of-
(a) its identity with an earlier trade mark and similarity of goods or services covered by the trade mark;"
8. A reading of the above provision would show that the registration of the mark shall be refused where the earlier trade mark is identical to that of the trade mark applied for and the goods/services covered by such trade marks are also similar. The impugned 'Statement of Grounds of Decision' does reflect consideration of the Senior Examiner of Trade Marks to this second aspect. The order is rather cryptic and is reproduced hereinunder:-
" With reference to the above and request on Form TM-M dated 19/03/2019. It has been decided by the Registrar of Trade Marks to inform you that hearing in respect of above application was held on 28/02/2019 and the said application is refused on the following Grounds;
*Adv. Shriram appears and made submissions.
Heard. Perused. Conflicting marks cited in the examination report phonetically similar. No documentary evidence is filed in support of or. Hence Refused.
*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 good or services covered by the trade mark."
9. The submission of the learned counsel for the appellant that the fact that ten cited marks had either been abandoned/not renewed/removed from Signature Not Verified Digitally Signed By:SHALOO BATRA Signing Date:29.08.2022 18:09:44 the Register of Trade Marks and one of the marks cited belongs to the appellant, also does appear to have been considered by the Senior Examiner of Trade Marks in the impugned order or the 'Statement of Grounds of Decision'.
10. In view of the above, the impugned order dated 19.03.2019 and the 'Statement of Grounds of Decision' dated 10.04.2019 are set aside. The matter is remanded back to the Examiner of Trade Marks for a fresh consideration of the application of the appellant, specifically on the similarity of goods/services of the appellant with that of the cited marks. All other submissions of the appellant shall also remain open in such examination. Such re-examination by the Senior Examiner of Trade Marks be carried out within a period of four weeks from today.
11. The appeal is allowed in the above terms. There shall be no order as to costs.
NAVIN CHAWLA, J AUGUST 25, 2022/rv/AB Signature Not Verified Digitally Signed By:SHALOO BATRA Signing Date:29.08.2022 18:09:44