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1. The present appeal under Section 91(1) of the Trade Marks Act, 1999 [hereinafter "the Act"] impugns order dated 24th October, 2018 [hereinafter "impugned order"] read along with statement of reasons dated 26th December, 2018, both issued by Senior Examiner of Trade Marks, whereby Appellant's application no. 2719975 for word mark "PRINCESS PAT" 

                                        "Sl.       Application        STATUS AS ON              PAGE
                                        No.       No. & MARK         DECEMBER 7, 2022            No

PRINCESS

PRINCESS

PRINCESS

PRINCESS
                                         5          2599834                REFUSED                5"
                                                   PRINCESS

4. As regards other two conflicting device marks, he argues that visibly the marks are entirely different when compared to Appellant's subject mark:

Appellant's Subject Mark Alleged Conflicting Mark PRINCESS PAT

5. The court has heard the counsel. Appellant has applied for composite mark "PRINCESS PAT" without any exclusive rights on constituent words - individually or separately. Respondent has denied registration under Section 11 of Act by solely relying on previous applications for a similar or identical marks, although majority of them stand removed/ refused. Appellant has registrations for identical mark in several other jurisdictions, including European Union, Russia, Taiwan, United States of America, Japan, France, Hong Kong, South Korea, Philippines, Thailand, as mentioned in Appellant's reply to the Examination Report. On account of long and continuous use, Appellant has applied for subject mark on the ground that it has acquired distinctiveness and holds trans-border reputation. Registration was sought in India in order to expand its business. Given the removal of four and refusal of one out of seven cited marks from the register of trademarks, circumstances have indeed changed and comparison only needs to be undertaken with the two remaining marks. It is a well settled principle that the comparison has to be made between two trademarks as a whole.1 The mark under application number 733306 contains the word "princess" written in Hindi along with picture of a lady and application under number 1008122 is entirely dissimilar on a bare perusal. Both marks are, (i) device marks containing varying elements of design as opposed to the subject mark which is a word mark, and (ii) ex-facie dissimilar to the subject mark and do not use the word "PAT".

(iii) Subject mark be advertised within a period of three months from today.
(iv) If there is any opposition, the same shall be decided on its own merits, uninfluenced by observations made hereinabove.
(v) The rights in subject mark shall be restricted to combination of words "PRINCESS PAT" as depicted above.