Joseph Vogele Ag vs Registrar Of Trademarks on 20 April, 2023

[Cites 2, Cited by 0]

Delhi High Court - Orders

Joseph Vogele Ag vs Registrar Of Trademarks on 20 April, 2023

1. Appellant - 'Joseph Vögele AG' has filed the instant appeal under Section 91 of the Trade Marks Act, 1999 [hereinafter "the Act"] impugning order dated 05th March, 2019 read along with Statement of Grounds of decision dated 10th July, 2019 [hereinafter separately "Refusal Order" and "Statement of Grounds" and collectively "Impugned Orders"] whereby Appellant's multi-class Trade Mark Application No. 2567389 for registration of the word mark 'AutoSet Plus' under Classes-07 and 09 [hereinafter "subject mark"], has been refused. Reasons supporting the decision elaborated in the Statement of Grounds are as follows:

"With reference to the above and request on Form TM-M dated 27/05/2019. It has been decided by the Registrar of Trade Marks to inform you that hearing in respect of above application was held on 05/03/2019 and the said application is refused on the following Grounds;

*11(1)(a) - Relative grounds for refusal of registration- The said trade Mark Signature Not Verified Digitally Signed C.A.(COMM.IPD-TM) 124/2022 Page 1 of 4 By:SAPNA SETHI Signing Date:27.04.2023 19:23:41 is refused for registration because of its identify 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 trademark there exists a likelihood of confusion on the part of the public,which includes the likelihood of association with the earlier trademark.

Identical/Similar, valid mark with same classification of goods/services vide app. no. 1309247, 1309248 are already on record. Likelihood of confusion. Mark is filed on proposed to be used basis. Objection under Section (11) sustained. Trademark application is accordingly refused."

2. Subject mark is found objectionable under Section 11 (1)(a) and (b) of the Act, in view of marks listed in the 'WORD MARK SEARCH REPORT' annexed to the Examination Report, which is culled out below:

Signature Not Verified Digitally Signed C.A.(COMM.IPD-TM) 124/2022 Page 2 of 4 By:SAPNA SETHI Signing Date:27.04.2023 19:23:41

3. Cited mark at sl. no. 2 - 'AutoSet' (Trade Mark Application No. 2567387) is Appellant's own mark; cited mark at sl. no. 3 - 'AUTOSET' (Trade Mark Application No. 921608), has been abandoned (as reflected on the online portal of the Trade Marks Registry); as regards cited marks at sl. nos. 1 and 4, Appellant has 'no objection'/ letter of consent, from the authorised persons of registered proprietor of the said marks - 'Rieter Ingolstadt GmbH' (annexed as Exhibit A-16 to appeal). In fact, counsel for Appellant has pointed out that in other jurisdictions, Appellant has acquired registrations of identical marks on the basis no objection from the said proprietors, indicating co-existence.

4. Indeed, the subject mark has been registered as a Community Trademark (EU CTM) and has several registrations in multiple jurisdictions including Japan, Russia, Germany, etc. as detailed in paragraph No. 2 of Signature Not Verified Digitally Signed C.A.(COMM.IPD-TM) 124/2022 Page 3 of 4 By:SAPNA SETHI Signing Date:27.04.2023 19:23:41 appeal.

5. For the foregoing reasons, the present appeal is allowed with following directions:

                          (i)      Impugned Orders is set aside.
                          (ii)     Trade Marks Registry is directed to process the registration
                                   application for the subject mark.
                          (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 'AutoSet Plus', as depicted above.

(vi) It is clarified the subject mark shall not grant any exclusive rights in the word 'Plus', separately or individually. This disclaimer/ condition and limitation shall be reflected in the Trade Marks Journal at the time of advertisement if the subject mark ultimately proceeds for registration.

6. With the above directions, the appeal is disposed of along with pending application(s), if any.

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

SANJEEV NARULA, J APRIL 20, 2023 d.negi (Corrected and released on: 27th April, 2023) Signature Not Verified Digitally Signed C.A.(COMM.IPD-TM) 124/2022 Page 4 of 4 By:SAPNA SETHI Signing Date:27.04.2023 19:23:41

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Delhi High Court - Orders