Valverde Norambuena Ltda vs Registrar Of Trademarks on 24 March, 2023

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Delhi High Court - Orders

Valverde Norambuena Ltda vs Registrar Of Trademarks on 24 March, 2023

1. The present appeal under Section 91 of the Trade Marks Act, 1999 [hereinafter "the Act"] impugns order dated 20th December, 2018 read along with Statement of Grounds of decision dated 21st February, 2019 both passed by Senior Examiner [hereinafter "impugned order"] whereby Appellant's Trade Mark Application No. 2839460 for registration of device mark - ' ' under Class-25 for "Child Costume" [hereinafter "subject mark"], has been refused. Reasons discernible from the Statement of Grounds of decision, are as follows:

"With reference to the above and request on Form TM-M dated 16/01/2019. It has been decided by the Registrar of Trade Marks to inform you that hearing in respect of above application was held on 19/12/2018 and the said application is refused on the following Grounds;

Signature Not Verified Digitally Signed C.A.(COMM.IPD-TM) 134/2022 Page 1 of 4 By:SAPNA SETHI Signing Date:25.03.2023 20:11:09

* Adv. Manish appeared and made submissions. Heard. Perused. Conflicting marks cited in the examination report phonetically similar and valid. Mark is filed on proposed to be used basis. Hence Refused * 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. As can be noticed from the above extract, the only ground of objection cited is Section 11(1)(a) of the Act, for which, reference to the 'Word Mark Search Report' is necessary which cites the following conflicting marks:

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3. At the outset, Mr. Abhishek Saket, counsel for Appellant, has handed over documents reflecting the current status of the cited marks, as reflected on the portal of Trade Marks Registry. The same are taken on record. In terms thereof, the first two cited marks at serial Nos. 1 and 2,1 have not been renewed and have lapsed on account of non-payment of the renewal fee; cited marks at serial Nos. 3 and 4 have been refused; 2 marks at serial No. 5 and 6 have been abandoned. 3 This brings us to the cited mark at serial No. 7 which is a device mark - ' ' comprising of the words 'Blue & Blue'.4 Appellant's subject mark, which is a device mark -

' ', comprises of a logo and words 'Black and Blue'. On comparison, the two device marks are prima facie dissimilar.

4. In view of the above, in the opinion of the Court, the subject mark 1 Trade Mark Application Nos. 1880288 and 2179312.

Trade Mark Application Nos. 2191637 and 2191639.

Trade Mark Application Nos. 2275313 and 2280824.

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should be allowed to proceed further for registration and accordingly, the appeal is allowed with the following directions:

                          (i)       Impugned order is set-aside.
                          (ii)       Subject mark be advertised 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.

(iv) Appellant will only be entitled to use the subject mark as a composite mark and cannot claim exclusive rights in either of the words 'BLACK' or 'BLUE' comprising the mark, individually or separately. This disclaimer shall be reflected in the Trade Marks Journal at the time of advertisement and also if the subject mark ultimately proceeds for registration.

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

6. Registry is directed to supply a copy of the present order to the Trade Marks Registry at [email protected] for compliance.

SANJEEV NARULA, J MARCH 24, 2023 as 4 Trade Mark Application No. 2458982.

Signature Not Verified Digitally Signed C.A.(COMM.IPD-TM) 134/2022 Page 4 of 4 By:SAPNA SETHI Signing Date:25.03.2023 20:11:09

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Delhi High Court - Orders