Delhi High Court - Orders
Sh. Rajesh Kumar Gupta (Shimlawala) vs The Registrar Of Trade Marks on 15 December, 2022
Author: Sanjeev Narula
Bench: Sanjeev Narula
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* IN THE HIGH COURT OF DELHI AT NEW DELHI
+ C.A.(COMM.IPD-TM) 47/2021
SH. RAJESH KUMAR GUPTA (SHIMLAWALA) ..... Appellant
Through: Mr. Somnath De, Advocate.
versus
THE REGISTRAR OF TRADE MARKS ..... Respondent
Through: Mr. Harish Vaidyanathan Shankar,
CGSC with Mr. Srish Kumar Mishra,
Mr. Sagar Mehlawat, Mr. Alexander
Mathai Paikaday, Advocates.
CORAM:
HON'BLE MR. JUSTICE SANJEEV NARULA
ORDER
% 15.12.2022
1. The present appeal under Section 91 of Trademarks Act, 1999 [hereinafter, "the Act"] impugns refusal order dated 27th December, 2018 [hereinafter, "impugned order"] read along with statement of reasons dated 08th March, 2019, both issued by Senior Examiner of Trademarks, whereby Appellant's application No. 2887155 for trademark "GOMTI HD ROYAL"
[hereinafter, "subject mark"] as a wordmark for Class 34, has been refused. The relevant portions of impugned order and statement of reasons is extracted hereunder:
Impugned order "The trade mark applied for is objectionable under Section 9/11 of the Act. The application is accordingly refused."Signature Not Verified Digitally Signed By:SAPNA SETHI Signing Date:20.12.2022 20:10:49
Statement of reasons "PRAVEEN KUMAR APPEARED, ARGUED/MADE SUBMISSION, HEARD CHECKED APPLICATION REPLY TO EXAMINATION REPORT, IT APPEARED THAT, REPLY IS NOT SATISFACTORY AS TO EXAMINATION REPORT, REGISTERED/PENDING SIMILAR CITED MARK WITH SAME GOODS IS ON RECORD, MARK IS NOT DISTINCTIVE SO OBJ.U/S 9 SUSTAIN MOREOVER IT IS PROPOSED TO BE USED SO BENEFIT OF PROVISO OF SEC. IS NOT PROVIDED, HENCE REFUSED. * 9(1)(a) - The trade mark is devoid of any distinctive character, that is to say, not capable of distinguishing the goods or services of one person from those of another person:
* 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"
2. Counsel for Appellant has drawn attention of this Court to conflicting marks cited in the examination report. Amongst those mentioned, Appellant is himself the proprietor of trademark applications 1183117, 1183118 and 1184255 under Class 34 for the mark "GOMTI". As regards remaining cited applications, it is noticed that some have been objected, while others are opposed and are dissimilar to the subject mark. Thus, the ground of rejection under section 11 is not sustainable. Insofar as second objection is concerned, since mark "GOMTI" itself has been registered in favour of Appellant, there was no basis to refuse acceptance of the application merely because two words "HD" and "ROYAL" were added to it. This addition would not make subject mark inherently devoid of distinctiveness under section 9(1) (a) of the Act.
3. Accordingly, present appeal is allowed with following directions:
(i) Impugned order dated 27th December, 2018, is set aside. Trademark Registry is directed to proceed for advertisement of Appellant's application No. 2887155, within three months from today.
(ii) If there is any opposition to the said application, the same shall be decided on its own merits, uninfluenced by observations made Signature Not Verified Digitally Signed By:SAPNA SETHI Signing Date:20.12.2022 20:10:49 hereinabove.
(iii) It is clarified that Appellant's rights in subject mark shall be restricted to combination of words "GOMTI HD ROYAL" as depicted above and shall not grant any exclusive rights in the words, "HD" or "ROYAL" separately or individually. This disclaimer shall be reflected in the trade marks journal at the time of advertisement as also if the subject mark ultimately proceeds for registration.
4. With the above directions, the appeal is disposed of along with pending application(s), if any.
5. Registry is directed to supply a copy of the present order to the Trademark Registry at [email protected] for compliance.
SANJEEV NARULA, J DECEMBER 15, 2022 as Signature Not Verified Digitally Signed By:SAPNA SETHI Signing Date:20.12.2022 20:10:49