Delhi High Court - Orders
Knitpro International vs Examiner Of Trade Marks on 3 May, 2023
Author: Sanjeev Narula
Bench: Sanjeev Narula
$~2
* IN THE HIGH COURT OF DELHI AT NEW DELHI
+ C.A.(COMM.IPD-TM) 57/2021
KNITPRO INTERNATIONAL ..... Appellant
Through: Mr. S. K. Bansal and Mr. Ajay
Amitabh Suman, Advocates.
versus
EXAMINER 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
% 03.05.2023
1. Present appeal under Section 91 of the Trade Marks Act, 1999 [hereinafter 'the Act'], is directed against:- (i) order dated 01st October, 2018 passed by Senior Examiner of Trade Marks [hereinafter 'refusal order'], whereby Appellant's application No. 2735619 in Class 26 for registration of trademark ' ' [hereinafter 'subject mark'] was refused under Section 9 and 11 of the Act, and (ii) the order dated 14th June, 2019 [hereinafter 'review order'], whereby the review filed against the refusal order was rejected. Collectively, the refusal order and review order are referred to as the impugned orders.
2. Appellant, a partnership firm, is engaged in the business of manufacturing various products such as needles, hooks, accessories, etc. Signature Not Verified Digitally Signed C.A.(COMM.IPD-TM) 57/2021 Page 1 of 6 By:DEEPANSHI NEGI Signing Date:05.05.2023 17:10:27 relating to hand knitting and crochet market. Appellant, with the help of an international panel of knitters and crocheters, has developed a range of such products, which are sold in over 50 countries worldwide. Appellant holds several trademark registrations in its favour, which comprise of distinctive shapes and patterns of knitting needles. As a part of a series of said trademarks, Appellant filed a trademark application for the subject mark on 12th May, 2014 with a user claim of 01st January, 2014, which was referred to as "DEVICE OF KEEL" in the Examination Report issued on 05th August, 2015. Said application was refused vide order dated 01st October, 2018, observing that, "the trademark applied for is objectionable under Sections 9 and 11 of the Act. The application is accordingly refused". The review filed by the Appellant against the said order was also rejected, relevant portion whereof is as follows:
3. Mr. S.K. Bansal, counsel for Appellant, states that the reference to the subject mark in the Respondent's record as "DEVICE OF KEEL" is incorrect. He states that that the subject mark pertains to a pattern on the surface of a knitting needle, which is inherently distinctive and has come to Signature Not Verified Digitally Signed C.A.(COMM.IPD-TM) 57/2021 Page 2 of 6 By:DEEPANSHI NEGI Signing Date:05.05.2023 17:10:27 be associated with the Appellant on account of long, continuous and extensive use. He contends that the impugned orders denying registration to subject mark being wholly unreasoned, are liable to be set aside.
4. Mr. Alexander Paikkaday, counsel for Respondent, has pointed out that the image of the subject mark provided in the application is not clear and accordingly, there is no clarity as to the exact mark for which Appellant is seeking registration in the application.
5. The Court has considered the aforenoted contentions. This Court has perused a picture of the Appellant's goods bearing the subject mark as contained in the Appellant's written submissions, reproduced as under:
6. In the opinion of the Court, the subject mark, a pattern on the surface of a knitting needle, is capable of being registered as a trademark, as it is distinctive and capable of distinguishing the goods of one person from another. Further, the Appellant already has multiple registrations for shapes of knitting needles as well as of patterns on the surface thereon. Details of which are provided at page 2 of Appellant's written submissions, which have been handed across the board and are taken on record. The said marks are also reproduced hereinunder. Therefore, the ground for refusal under Section 9 of the Act is not made out.
Signature Not Verified Digitally Signed C.A.(COMM.IPD-TM) 57/2021 Page 3 of 6 By:DEEPANSHI NEGI Signing Date:05.05.2023 17:10:27 Signature Not Verified Digitally Signed C.A.(COMM.IPD-TM) 57/2021 Page 4 of 6By:DEEPANSHI NEGI Signing Date:05.05.2023 17:10:27
7. As regards objections under Section 11 of the Act, one would have to turn to the Examination Report, which cites the conflicting marks. The same are extracted hereinbelow:
8. It is noticed that both of the cited conflicting marks are that of the Appellant. Given the above reasons, the Senior Examiner's objections based on Section 11 of the Act is also untenable. The Court notes that the Signature Not Verified Digitally Signed C.A.(COMM.IPD-TM) 57/2021 Page 5 of 6 By:DEEPANSHI NEGI Signing Date:05.05.2023 17:10:27 Respondent's objection on lack of clarity relating to the depiction of the subject mark is based on a low-quality image of the mark in question. The pictures of the subject mark contained in the Appellant's written submission, as shown to Court, are decidedly clear. Moreover, no such objection was raised by the Respondent in the impugned orders and thus, this issue cannot be urged at this stage. Nonetheless, it is directed that the Appellant shall file an additional representation of the subject mark, as per extant rules within one week from the date of release of this order. In case the Respondent seeks any clarification thereon, it shall be provided by the Appellant forthwith.
9. Subject to the above, the appeal is allowed with the following directions:
(i) Impugned orders i.e., refusal order and review order, are set aside.
(ii) Trade Marks Registry is directed to process the registration application for the subject mark.
(iii) Subject mark be advertised within a period of three months from the date of release of this order.
(iv) If there is any opposition, the same shall be decided on its own merits, uninfluenced by observations made hereinabove.
10. With the above directions, the appeal is disposed of along with pending application(s), if any.
11. Registry is directed to supply a copy of the present order to the Trade Marks Registry at [email protected] for compliance.
SANJEEV NARULA, J MAY 3, 2023/nk Signature Not Verified Digitally Signed C.A.(COMM.IPD-TM) 57/2021 Page 6 of 6 By:DEEPANSHI NEGI Signing Date:05.05.2023 17:10:27