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Russell E. Freebury vs Registrar Of Trade Marks on 27 April, 2023

Author: Sanjeev Narula

Bench: Sanjeev Narula

                          $~6
                          *     IN THE HIGH COURT OF DELHI AT NEW DELHI
                          +     C.A.(COMM.IPD-TM) 83/2021
                                RUSSELL E. FREEBURY                                    ..... Appellant
                                                      Through: Mr. Gaurav Miglani, Ms. Mansi Sharma
                                                              and Ms. Kanupriya Gera, Advocates.

                                                      versus

                                REGISTRAR OF TRADE MARKS                          ..... Respondent
                                                      Through: Mr. Harish Vaidyanathan Shankar,
                                                              CGSC, Srish Kumar Mishra, Sagar
                                                              Mehlawat, Alexander Mathai Paikaday,
                                                              Advocates

                                CORAM:
                                HON'BLE MR. JUSTICE SANJEEV NARULA
                                                      ORDER

% 27.04.2023

1. The present appeal under Section 91 of the Trademarks Act, 1999 impugns order dated 16th January, 2019 read along with Statement of Grounds of Decision dated 15th February, 2019, both passed by the Senior Examiner of Trademarks, rejecting Appellant's trademark Application No. 2890825 in class 3 for registration the trademark "ZINKA" in respect of non-medicated skin care preparations namely, moisturizing pastes, creams and lotions, sun tanning, sun screening and sun blocking preparations.

2. The reasons disclosed in the Statement of Grounds of Decision are as follows:

"None appeared. Identical/Similar, valid mark with same classification of goods/services is already on record. Likelihood of confusion. Objection under Section (11) sustained.

Trademark refused on merit * 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 * 11(1)(b) - Relative grounds for refusal of registration. The said trade Mark Is refused for registration because of its similarity to an earlier trade mark and the identity or similarity of the goods or services covered by the trade mark there exists a likelihood of confusion on the part of the public, which includes the likelihood of association with the earlier trade mark."

3. The subject mark has been refused registration under Section 11(1)(a) and (b) of the Trademarks Act. Before proceeding to assess the grounds of refusal, it must first be noted that Mr. Gaurav Miglani, counsel for Appellant, on instructions, states that Appellant is willing to amend the subject mark from the wordmark "ZINKA" to a device mark " " [hereinafter "modified mark"]. Representation of the modified mark has been filed by Appellant on 13th April, 2023 vide Index D- 639269. Therefore, Appellant's application is now being considered for the device mark " ".

4. Since the application is refused only under Section 11(1), we turn to the conflicting marks cited in the examination report, which are reproduced below:

By:SAPNA SETHI Signing Date:29.04.2023 17:14:26

5. As per the website of the Trademarks Registry, the marks registered under trademark application Nos. 299203, 551434, 1318276 (at S. Nos. 1, 2 and 3 of the afore-noted extract) are likely to be removed due to non-filing of renewal request. While the registrations of remaining marks are currently subsisting, the same have been registered in respect of bleaching preparations, detergent cakes, hair lotions etc., which are not covered in Appellant's form TM-1. Appellant has restricted its use of its mark only to non-medicated skin care preparations namely, moisturizing pastes, creams and lotions, sun tanning, sun screening and sun blocking preparations and thus, there is no similarity of goods and services to which the marks are applied.

6. During the course of hearing, the Court's attention has been drawn to a third-party trademark application No. 5042011 for an identical device mark " ", which has been accepted and advertised in class 3. Mr. Miglani emphasises that above-noted mark has been adopted in bad faith and points out that this application has been filed on 13th July, 2021 on a proposed-to-be-used basis, whereas, Appellant has been using the Signature Not Verified Digitally Signed C.A.(COMM.IPD-TM) 83/2021 Page 4 of 5 By:SAPNA SETHI Signing Date:29.04.2023 17:14:26 "ZINKA" mark for more than 30 years.

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

(i) The impugned order dated 16th January, 2019 read along with Statement of Grounds of Decision dated 15th February, 2019, are set aside.

(ii) As agreed by the counsel for Appellant, the mark "ZINKA" bearing application No. 2890825 in class 3 is replaced with " ".

The necessary forms for the said purpose shall be filed within a period of six weeks from today.

(iii) Trademarks Registry is directed to process the registration application for the modified mark, as noted above.

(iv) The modified mark be advertised without acceptance as per proviso of Section 20 of the Trademarks Act, 1999, within a period of three months from today.

(v) 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.

9. It is clarified that the Court has not expressed any opinion with respect to the validity of acceptance of the trademark under application No. 5042011. All the rights and contentions of parties to that extent are left open.

SANJEEV NARULA, J APRIL 27, 2023/sk Signature Not Verified Digitally Signed C.A.(COMM.IPD-TM) 83/2021 Page 5 of 5 By:SAPNA SETHI Signing Date:29.04.2023 17:14:26