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Travelodge Hotels India(Ip) Pte Ltd vs Registrar Of Trademarks on 13 January, 2023

Author: Sanjeev Narula

Bench: Sanjeev Narula

                          $~5
                          *        IN THE HIGH COURT OF DELHI AT NEW DELHI
                          +        C.A.(COMM.IPD-TM) 142/2022
                                   TRAVELODGE HOTELS INDIA(IP) PTE LTD ..... Appellant
                                                 Through: Mr. Saif Khan and Mr. Prajjwal
                                                            Kushwaha, Advocates.

                                                          versus

                                   REGISTRAR OF TRADEMARKS                ..... 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

% 13.01.2023

1. The present appeal under Section 91(1) of Trade Marks Act, 1999 [hereinafter "the Act"] impugns order dated 17th February 2022 whereby Appellant's application no. 3038903 for mark "TRAVELODGE SKYE"

[hereinafter "subject mark"] in Class 43 was refused. The relevant portion of order is extracted hereunder:

"The mark applied for registration is identical with /similar to earlier trademarks on record, as mentioned in the Examination report and by similarity of marks as well as similarity of goods and services covered under such marks, there exists a likelihood of confusion in the mind of public. As such the registration ofthe mark is objectionable under Section 11l(1) ofthe Trade Marks Act 1999.

Adv. NUPUR appeared and argued and submitted that, as whole mark is not descriptive moreover 2nd cited mark is belong to the applicant furthermore the applicant filled rectification against the TRAVELOOGE HOTELS LIMITED vide no. ORA/138/2018/TM/DL/8856 in the IPAB. heard, and checked the details of application Total seven hearing opportunities are given and as per examination report Deceptively and phonetically and conceptually and structurally similar registered and duly renewed and valid prior cited mark nos. 1277414,2947940 with the Signature Not Verified Digitally Signed C.A.(COMM.IPD-TM) 142/2022 Page 1 of 5 By:SAPNA SETHI Signing Date:18.01.2023 20:20:03 identical services and prior user are on record, and the applicant mark have no significance and uniqueness in the adoption of the trade mark. so there is no difference between cited mark and the applicant mark, since the prominent feature of the mark is a common term, as there is phonetically and visual similarity with the cited mark. Further more the applicant applied the mark as a proposed to be used mark, so not having user so no acquired secondary meaning and no honest and concurrent user. Furthermore, the IPAB final Order copy against the TRAVELODGE HOTELS LIMITED does not filed by the applicant so the application no.1277414 is still in force. Moreover,It is a well settled law that, "The resemblance between the two marks must be considered with reference to the ear as well as the eye" also It is a well settled law mere addition of prefix or suffix to a mark does not remove likelihood of confusion so upon considering the material on record, obj. raised under sec. 11 trade Mark Act 1999 does not waived. so application is refused.

After perusal of all the documents on record and submission made by the applicant / authorised agent it is concluded that applied mark is not registrable because of the reason stated as above. Hence application no 3038903 cannot be accepted and refused accordingly."

2. Mr. Saif Khan, counsel for Appellant submits that the Appellant is the proprietor of mark "TRAVELODGE", registered vide application no. 517417 in Class 03 dated 26th September 1989, in respect of soaps, perfumery, cosmetics, hair lotions, bath salts, bath oil, etc. The Senior Examiner erred in refusing registration under Section 11 of the Act as the cited marks are firstly dissimilar and registration of 'TRAVELODGE' under application number 1277414 is invalid as Appellant is the rightful claimant of the mark "TRAVELODGE" in view of its prior registration under application no. 517417. Appellant has already filed a rectification of trademark no. 1277414 and opposition in respect of application no. 2947940 for mark "TRAVELODGE" in Class 43. Further, Appellant deserves parity on registration process vis-à-vis Appellant's application no. 3038901 for mark viz. "TRAVELODGE NANO" in Class 43, which has been permitted to be advertised. He submits that the subject mark should also be advertised at the very least and thereafter, if there is any opposition, the same can be Signature Not Verified Digitally Signed C.A.(COMM.IPD-TM) 142/2022 Page 2 of 5 By:SAPNA SETHI Signing Date:18.01.2023 20:20:03 dealt by the Registry in accordance with law.

3. Per contra, Mr. Harish Vaidyanathan Shankar, Standing Counsel for Respondent, strongly opposes the petition and submits that cited marks are evidently similar to the subject mark and therefore Senior Examiner's decision warrants no interference. He further submits that reliance upon prior registration in favour of Appellant is of no consequence as the same relates to Class 03, whereas rejected application for subject mark is for goods/services falling under Class 43. Additionally, since rectification proceedings against application no. 1277414 are ongoing at the instance of Appellant, application for subject mark should be considered only if Appellant succeeds in said proceedings.

4. The Court has considered the aforenoted submissions.

5. The conflicting marks contained in Examination Report dated 03rd March, 2016 are as follows:

6. There is indeed a prima facie similarity between subject mark and relevant cited marks, as prominent feature of the subject mark, i.e., word "TRAVELODGE" is also found in the cited marks, being application no. 1277414 in Class 42 and application no. 2947940 in Class 43. The Court is, however, not expressing any opinion whether the registration under application no. 1277414 is valid or not as rectification proceedings are pending. The application no.1312833 in Class 42, has been assigned in favour of Appellant and a request has been filed to record Appellant as the subsequent proprietor of the said mark. Keeping the dispute over the mark 'TRAVELODGE' aside, since appellant's application for other "TRAVELODGE" formative marks viz. "TRAVELODGE NANO"

(application no. 3038901) and "TRAVELODGEONE" (application no. 3038902) under Class 43 have been permitted to be advertised without acceptance, it would be appropriate that the same approach is adopted for the subject mark.

7. In view of the above, appeal is allowed with the following directions:

(i) Impugned order dated 17th February, 2022 is set aside;

(ii) Trademark Registry is directed to process the registration application wherein subject mark viz. "TRAVELODGE SKYE" is permitted to be advertised without acceptance as per proviso to Section 20 of the Act, 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;

8. With the above directions, the appeal is disposed of along with pending application(s), if any.

9. Registry is directed to supply a copy of the present order to the Trademark Registry at [email protected] for compliance.

SANJEEV NARULA, J JANUARY 13, 2023/'akc' Signature Not Verified Digitally Signed C.A.(COMM.IPD-TM) 142/2022 Page 5 of 5 By:SAPNA SETHI Signing Date:18.01.2023 20:20:03