Delhi High Court - Orders
Tci Foundation vs Registrar Of Trade Marks on 22 December, 2022
Author: Sanjeev Narula
Bench: Sanjeev Narula
$~6
* IN THE HIGH COURT OF DELHI AT NEW DELHI
+ C.A.(COMM.IPD-TM) 141/2021
TCI FOUNDATION ..... Appellant
Through: Mr. Shivendra Pratap Singh and Mr.
Navdeep Suhag, Advocates.
versus
REGISTRAR OF TRADE MARKS ..... Respondent
Through: Mr. Harish Vaidyanathan Shankar,
CGSC with Mr. Srish Kumar Mishra,
Mr. Sagar Mehlawat and Mr.
Alexander Mathai Paikaday,
Advocates.
CORAM:
HON'BLE MR. JUSTICE SANJEEV NARULA
ORDER
% 22.12.2022
1. The present appeal under Section 91 of the Trade Marks Act, 1999 is directed against order dated 22nd August, 2019, whereby Appellant's application no. 3262448 for the label mark " " in Class 44 in relation to "Medical services, veterinary services, hygienic and beauty care for human beings or animals; agriculture, horticulture and forestry services falling in Class 44" was refused.
2. The grounds for refusal are as under:
Signature Not Verified Digitally Signed C.A.(COMM.IPD-TM) 141/2021 Page 1 of 4 By:SAPNA SETHI Signing Date:23.12.2022 18:38:12"ORDER A Hearing in respect of the above matter came up before me on 24/06/2019 and the following is to be communicated to the applicant/agent:
* ADV. S.P. SINGH Applicant/Advocate/Agent appeared before me and made his submissions. I have heard arguments, gone through the records and passed the following Order.
* ADV. S.P. SINGH Applicant/Advocate/Agent appeared before me and made his submissions. I have heard arguments, gone through the records and passed the following Order.
* NON COMPLIANCE OF EXAMINATION REPORT.
Attention is invited under Rule 36(1) of the Trade Marks Rules, 2017 where the application is refused a request may be made in form TM-M along with the prescribed fee to communicate in writing the grounds of decision and materials used by the Registrar in arriving at his decision to refuse the said application. The said request on form TM-M should be tendered within 30 days of receipt of the order of refusal."
3. The examiner has rejected the application on the ground that Petitioner failed to respond to the examination report. Mr. Shivendra Pratap Singh, Counsel for Appellant, has argued that this ground is factually incorrect, since a response was submitted on 21st November, 2016 and also taken on record, but was still ignored by the examiner.
4. Mr. Alexander Mathai Paikaday, counsel for Respondent, on the other hand, argues that as per record annexed with the appeal, response was not filed in time. Counsel for the Appellant staunchly refutes the above statement and clarifies that the response was sent through e-mail within the prescribed time, and then subsequently uploaded on the website.
5. Be that as it may, Respondent has objected to the mark under Section 11(1) of the Trade Marks Act, 1999, as the subject mark is identical with or similar to earlier marks cited in the Examination report. The same are Signature Not Verified Digitally Signed C.A.(COMM.IPD-TM) 141/2021 Page 2 of 4 By:SAPNA SETHI Signing Date:23.12.2022 18:38:12 extracted from the Search Report, as follows:
6. The afore-noted label/ device marks use the word "KAVACH", however they are falling in Class 42, whereas the subject mark has been applied for in Class 44, which are widely dissimilar. Further, device/label marks have to be compared as whole and commonality of one feature word "KAVACH" in the subject mark , which is a composite mark, cannot be a ground to reject the application.
7. For above-noted reasons, the present appeal is allowed, with following directions:
(i) Impugned order dated 22nd August, 2019, is set aside. Trademark Registry is directed to directed to process the application No. 3262448.
(ii) Subject mark be advertised within a period of three months from today.
(iii) If there is any opposition, the same shall be decided on its own merits, uninfluenced by observations made hereinabove.
(iv) It is clarified that Appellant shall have rights in subject mark as a composite mark. This disclaimer shall be reflected in the trade marks journal at the time of advertisement, and also if the Signature Not Verified Digitally Signed C.A.(COMM.IPD-TM) 141/2021 Page 3 of 4 By:SAPNA SETHI Signing Date:23.12.2022 18:38:12 subject mark ultimately proceeds for registration.
8. With the above directions, the appeal is disposed of.
9. Registry is directed to supply a copy of the present order to the Trademark Registry at <[email protected].> for compliance.
SANJEEV NARULA, J DECEMBER 22, 2022/as Signature Not Verified Digitally Signed C.A.(COMM.IPD-TM) 141/2021 Page 4 of 4 By:SAPNA SETHI Signing Date:23.12.2022 18:38:12