Surender Kumar vs The Registrar Of Trademakrs on 17 February, 2023

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Delhi High Court - Orders

Surender Kumar vs The Registrar Of Trademakrs on 17 February, 2023

1. The present appeal under Section 91 of the Trademarks Act, 1999 arises from order dated 06th December, 2019 passed by the Senior Examiner [hereinafter, "impugned order"], refusing registration for Appellant's mark "CANON" under application No. 2879536 in class 35 for services and marketing, sale, import, advertising in relation to nuts, bolts, rivets, screws, fasteners, washers, railing, false celling and flooring, pipes and tubes (Metallic), hand tools, sanitary wares (non-ceramic), building materials viz. tiles, flooring and ceiling services of repair and maintenance and contracts [hereinafter, "subject mark"].

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2. The reasons disclosed in the impugned order are as follows:

"The mark applied for registration is objectionable under following provision of the Trade Marks Act, 1999 -

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 of the mark is objectionable under Section 11(1) of the Trade Marks Act 1999.

None appeared, many opportunities of hearing given, Reply perused not satisfactory, checked the details of the application, it appears that, Deceptively and phonetically and conceptually similar registered mark nos. 1243542,2246273 with the similar services are on record, and the applicant mark have no significance and uniqueness in the adoption of the trade mark, since it is a common term, hence there is no difference between cited mark and the applicant's mark, further more user claim since 1985 but submitted the user evidence in support since 1995, so not prove the user as claim, also "CANON" is an a "well known trademark" as per IPAB Order in OA/43/2005 and listed as sr. no "60" of well known mark, also a copy of delhi high court order no. C.S.(os) no. 82 of 2007 from the settlement attached herewith, but the same is not an certified copy ,moreover as per that order mentioned for restriction to the GOODS "Nuts, Bolts, Rivets, Screws, Fasteners, Washers, Railing, False Ceiling & Flooring, Pipes & Tubes (Metallic), Hand Tools, Sanitary Wares (non ceramic). Building Materials viz. Tiles, Flooring and Ceiling services of repair and maintenance and contracts." but not for the "Services & Marketing, Sale, Import, Advertising in relation to" so the said order is not applicable for this class, so upon considering the material on record and submissions made the applicant and adv. is fail to prove the justification for waving off obj. raised under sec. 11 trade Mark Act 1999.

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 2879536 cannot be accepted and refused accordingly."

3. The Senior Examiner has objected to registration of the subject mark under Section 11 of the Trademarks Act in view of conflicting marks cited in the examination report, extracted hereunder:

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4. The afore-said conflicting word and device mark "CANON" have been on the register w.e.f. 15th October, 2003 and 08th December, 2011, respectively. However, it emerges that in an earlier litigation between Appellant and the registered proprietor of afore-noted conflicting marks, a settlement came about, basis whereof on a joint application of parties under Order XXIII Rule 3 of the CPC, the suit was decreed by this Court on 08th July, 2014.1 The copies of the application as well as the decree binding the parties to settlement terms have been placed on record, which read are as under:

"2. The Plaintiffs and the Defendant No. 2 & 3 have agreed to settle their disputes arising in the present suit and are entering into a settlement on terms set hereinafter.

a. Subject to sub clause (b) and (c), the Defendant No. 2 & 3 would limit and restrict the use and registration of the mark "CANON", to the following goods, within the territory of India: "nuts, bolts, rivets, screws, fasteners, washers, railing, false ceiling & flooring, pipes & tubes (metallic), hand tools sanitary wares (non ceramic), building materials viz. tiles, flooring and ceiling and services of repair arid maintenance and contracts in relation to the aforesaid goods.

xx -xx- xx

5. As per the above terms, Canon Kabushiki Kaisha (registered proprietor of cited marks) consented to Appellant's use and registration of the subject mark for certain goods, falling in class 35, under which the application No. 2879536 for the subject mark has been filed. The Appellant had brought the above-noted order to the notice of the Senior Examiner, but she did not rely upon the same as it was not a certified copy.

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6. In the opinion of the Court, impugned order is erroneous. The order dated 08th July 2014, which was presented before the Senior Examiner, clearly records the factum of settlement. If any doubts persisted regarding its authenticity, the Senior Examiner could have directed production of a certified copy of the said order. Respondent has also erred in holding that the aforesaid settlement does not permit "Services & Marketing, Sale, Import, Advertising in relation to" the concerned goods. Settlement terms, as extracted above, record that Appellant could use the subject mark for the goods applied for, without any explicit restriction. Accordingly, reasons disclosed in the impugned order are not sustainable. Insofar as the issue of variance in user date claimed is concerned, the requirement to prove use through affidavit was introduced by the Trademarks Rules, 2017, which came into effect subsequent to Appellant's application dated 10th January, 2015. Thus, this too, could not have been a ground to deny registration.

7. For the above reasons, the present appeal is allowed with the following directions:

(i) Impugned order dated 06th December, 2019 is set aside.

(ii) Trade Marks Registry is directed to process the registration for Appellant's mark "CANON" under application No. 2879536 in class 35.

(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.

8. With the above directions, the appeal is disposed of.

In CS(OS) 82/2007.

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

SANJEEV NARULA, J FEBRUARY 17, 2023 as Signature Not Verified C.A.(COMM.IPD-TM) 68/2021 Page 5 of 5 Digitally Signed By:SAPNA SETHI Signing Date:21.02.2023 20:09:14

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Delhi High Court - Orders