Madras High Court
(Oa/6 vs The Registrar Of Trademarks on 10 August, 2023
Author: Senthilkumar Ramamoorthy
Bench: Senthilkumar Ramamoorthy
2023:MHC:3691
(T)CMA(TM).Nos.79, 155 of 2023
IN THE HIGH COURT OF JUDICATURE AT MADRAS
DATED: 10.08.2023
CORAM
THE HONOURABLE MR.JUSTICE SENTHILKUMAR
RAMAMOORTHY
(T)CMA(TM).Nos.79, 155 of 2023
(OA/6, 7/2020/TM/CH)
Foodvista India Pvt. Ltd.,
“Indiqube-Delta”,
No.6, 14th Main Road,
HSR Layout, 5th Sector,
Bangalore – 560 102. ...Appellant
in both Appeals
Vs.
The Registrar of Trademarks,
The Trademarks Registry,
IP Building, GST Road,
Guindy, Chennai – 600 032. ...Respondent
in both Appeals
Prayer in (T)CMA(TM).No.79 of 2023: Transfer Civil Miscellaneous Appeal
(Trademarks) filed under Section 91 of the Trademarks Act, 1999 to set aside
the order of refusal dated 29.04.2019 issued by the respondent in Application
No.3104890 in Class 43 and consequently proceed with the application in the
manner known to law.
Page 1 of 8
https://www.mhc.tn.gov.in/judis
(T)CMA(TM).Nos.79, 155 of 2023
Prayer in (T)CMA(TM).No.155 of 2023: Transfer Civil Miscellaneous
Appeal (Trademarks) filed under Section 91 of the Trademarks Act, 1999 to set
aside the order of refusal dated 29.04.2019 issued by the respondent in
Application No.3104893 in Class 43 and consequently proceed with the
application in the manner known to law.
For Appellant : Mr.S.Diwakar
for M/s.FACTUM LAW
For Respondent : Mr.R.Rajesh Vivekanandhan
Deputy Solicitor General
COMMON JUDGMENT
The appellant is in the business of curating food menus, cooking, packaging and delivering multi cuisine food through the platform named as "FRESHMENU". The appellant asserts that the word mark "FRESHMENU" has been used continuously since 19.08.2014 in respect of the above mentioned services and the device mark has been used continuously since 01.07.2015. Applications for registering these marks were filed on 24.11.2015. In support of these applications, the appellant had submitted evidence of use. Such evidence included the registration of the Page 2 of 8 https://www.mhc.tn.gov.in/judis (T)CMA(TM).Nos.79, 155 of 2023 domain name "www.freshmenu.com" on 07.01.2000, the invoices issued from 26.09.2014 and advertisements placed to promote the appellant's services. In response to the word mark application, the Trade Marks Registry submitted an examination report raising objections both under Section 9(1)(b) of the Trade Marks Act, 1999 (Trade Marks Act) and Section 11(1) thereof as regards the word mark. The objection under Section 9(1)(b) of the Trade Marks Act was on the ground that the mark is descriptive of the quality and kind of the service. The relative ground of objection under Section 11 was on the basis of an application for registration of the device mark 'Reliance Fresh Signature Store', which had been accepted and advertised. As regards the device mark, the only objection that was raised in the examination report was under Section 11(1) of the Trade Marks Act by citing the application of the appellant herein.
2. The appellant submitted a reply to the examination report denying that the mark "FRESHMENU" contains words that designate the kind, quality, etc. of the services. In this connection, learned counsel for the appellant also relies on the proviso to Section 9(1). The said proviso is set out below:-
"PROVIDED that a trade mark shall not be refused registration if before the date of application for Page 3 of 8 https://www.mhc.tn.gov.in/judis (T)CMA(TM).Nos.79, 155 of 2023 registration it has acquired a distinctive character as a result of the use made of it or is a well-known trade mark."
3. As regards the relative ground of objection, the appellant stated that there is no likelihood of confusion between the appellant's mark and the mark cited by the Trade Marks Registry. Pursuant to a hearing, the order dated 30.03.2019 was issued and the operative part of the said order is set out below:-
"The trade mark applied for is objectionable under Section 9 of the Act. The application is accordingly refused."
4. On receipt of this order, the appellant made a request for the grounds of decision under Rule 36(1) of the Trade Marks Rules, 2017 (The Trade Marks Rules). In response, the communication dated 29.04.2019 was received. The operative part of the said communication is set out below:-
"*Adv Reshma appeared Mark is descriptive with respect to quality for the applied description of services. Hence objection U/S 9 cannot be waived Refused accordingly *Applied mark FRESH MENU is highly descriptive Page 4 of 8 https://www.mhc.tn.gov.in/judis (T)CMA(TM).Nos.79, 155 of 2023 to the applied description of FOOD AND DRINK Hence objection raised U/S 9(1) (b) cannot be waived and refused accordingly"
5. Learned counsel for the appellant assails the impugned orders, including the grounds of decision, on the basis that it is completely unreasoned and fails to take into consideration the evidence of use and acquired distinctiveness.
6. Mr.Rajesh Vivekananthan, learned Deputy Solicitor General, submits that the relevant marks are clearly descriptive and, therefore, the orders impugned in these appeals do not warrant interference.
7. The impugned order, which is set out above, is undoubtedly bereft of reasons. Notwithstanding Rule 36(1) of the Trademark Rules, it is incumbent on any authority exercising quasi judicial powers to specify the reasons for its decisions. In this case, even the grounds of decision do not deal with the evidence adduced by the appellant. Instead, the grounds of decision merely state that the objection under Section 9 cannot be waived, in view of the stated Page 5 of 8 https://www.mhc.tn.gov.in/judis (T)CMA(TM).Nos.79, 155 of 2023 descriptive nature of the mark. On this issue, it is also pertinent to note that the proviso to Section 9(1) has not been taken into consideration while rejecting the application.
8. In these circumstances, the orders impugned in these appeals are unsustainable. Consequently, these orders are set aside and the matter is remanded for reconsideration by the Registrar of Trade Marks. The Registrar of Trade Marks is directed to reconsider these applications by taking into account the entire evidence placed on record by the appellant and by providing a reasonable opportunity of hearing to the appellant. A reasoned order shall be issued thereafter within a maximum period of two months from the date of receipt of a copy of this order. It is made clear that the merits of the applications have not been considered in these appeals. No costs.
10.08.2023 Index:Yes Speaking order Neutral Citation:Yes hvk Page 6 of 8 https://www.mhc.tn.gov.in/judis (T)CMA(TM).Nos.79, 155 of 2023 To The Registrar of Trademarks, The Trademarks Registry, IP Building, GST Road, Guindy, Chennai – 600 032.
Page 7 of 8 https://www.mhc.tn.gov.in/judis (T)CMA(TM).Nos.79, 155 of 2023 SENTHILKUMAR RAMAMOORTHY,J.
hvk (T)CMA(TM).Nos.79, 155 of 2023 (OA/6, 7/2020/TM/CH) 10.08.2023 Page 8 of 8 https://www.mhc.tn.gov.in/judis