Delhi High Court - Orders
Les Ateliers Louis Moinet Sa vs The Registrar Of Trade Marks on 8 February, 2023
Author: Sanjeev Narula
Bench: Sanjeev Narula
$~7
* IN THE HIGH COURT OF DELHI AT NEW DELHI
+ C.A.(COMM.IPD-TM) 72/2021
LES ATELIERS LOUIS MOINET SA ..... Appellant
Through: Ms. Priya Adlakha and Ms. Rima
Majumdar, Advocates.
versus
THE REGISTRAR OF TRADE MARKS ..... Respondent
Through: Mr. Harish Vaidyanathan Shankar,
Central Government Standing
Counsel with Mr. Srish Kumar
Mishra, Mr. Sagar Mehlawat and Mr.
Alexander Mathai Paikaday,
Advocates.
CORAM:
HON'BLE MR. JUSTICE SANJEEV NARULA
ORDER
% 08.02.2023
1. The present appeal under Section 91 of the Trade Marks Act, 1999 [hereinafter "the Act"], is directed against order dated 24th September, 2019 read along with Statement of grounds of decision dated 01st November, 2019 [hereinafter collectively "impugned order"], whereby Appellant's Trade Mark Application No. 2737550 for the mark 'LOUIS MOINET' [hereinafter "subject mark"] for horological and chronometric instruments; jewels, jewellery falling under Class-14, has been rejected under Section 9(1)(a) and 11 of the Act. Relevant portion of the reasons given in the Statement of Grounds of decision are culled out below:
" xx ... xx ... xx * None appeared, many opportunities given, Reply perused not satisfactory, checked the details of the application, it appeared that, Deceptively and phonetically and conceptually similar registered mark with the identical Signature Not Verified Digitally Signed C.A.(COMM.IPD-TM) 72/2021 Page 1 of 6 By:SAPNA SETHI Signing Date:13.02.2023 20:09:51 goods are on record, Mark is not inherently distinctive in nature, moreover it is proposed to be used, hence refused.
* None appeared, many opportunities of hearing given, no request for adjournment filed, Reply perused not satisfactory, checked the details of the application, it appeared that, Deceptively and phonetically and conceptually similar registered/pending marks with the identical goods are on record, and the applicant mark have no significance and uniqueness in the adoption of the trade mark, since the prefix and suffix go is a common English term, hence there is no difference between cited mark and the applicant's mark, also Mark is not inherently distinctive in nature, moreover it is proposed to be used mark, so benefit of proviso of sec. 9 is not provided, and upon considering the material on record and submissions made, it is unable to prove the justification on sec.11 as well as sec.9(1)(a) of the trade marks Act, 1999."
2. Ms. Priya Adlakha, counsel for Appellant, submits that the subject mark has been wrongly rejected. Appellant's brand is known for their limited editions timepieces using rare materials such as dinosaur bones to fossilized wood. She submits that in the year-2007, Appellant-Company became the bona fide proprietor of trademarks registrations and all rights accruing thereunder including the subject mark and its variants, which were transferred in its favour by Mr. Jean-Marie Schaller. The subject mark and its variants have been in use since the year-1994 and the same are inherently distinctive. Appellant has registrations in several jurisdictions including United States, Switzerland, European Union, Australia, Canada, etc. Mr. Harish Vaidyanathan Shankar, CGSC for Respondent, opposes the petition and supports the reasoning given in the impugned orders.
3. The Court has considered the afore-noted submissions and perused the documents on record. It appears that Appellant has not appeared before the Senior Examiner of Trade Marks, nonetheless, since grounds for refusal are discernible from the impugned order, instead of remanding the matter Signature Not Verified Digitally Signed C.A.(COMM.IPD-TM) 72/2021 Page 2 of 6 By:SAPNA SETHI Signing Date:13.02.2023 20:09:51 back to authority, it is considered appropriate to decide the appeal on merits.
4. The Senior Examiner rejected the subject mark under Section 11 of the Act, finding it deceptively and phonetically similar to the cited mark for identical class of goods. In addition thereto, subject mark was found not to be inherently distinctive under Section 9(1)(a) of the Act.
5. The subject mark, is the name of founder of the Appellant-Company, which is used for selling luxury brand of timepieces. The mark is thus inherently distinctive, as the name of the founder has no direct connection with the goods to which it is being applied to. It is capable of distinguishing the goods of one person from those of another. The objection under Section 9(1)(a) is not sustainable.
6. Next, we shall deal with the objection under Section 11(1)(a) and (b) of the Act, for which it would be appropriate to extract the search report hereinbelow: -
Signature Not Verified Digitally Signed C.A.(COMM.IPD-TM) 72/2021 Page 3 of 6 By:SAPNA SETHI Signing Date:13.02.2023 20:09:517. The cited mark - 'LOUIS MONT' is nearly identical to the subject mark and the only variation is the omission of letters 'I' and 'E' from the subject mark viz. 'LOUIS MOINET'. The cited mark has been registered on 11th June, 2008 under Class-14. However, Ms. Adlakha states that since the said mark has not been in use, its registration is liable to be cancelled on the ground of non-use, notwithstanding the fact that it is a dishonest registration identical to Appellant's well-known mark which has been prior in use and has an international reputation. She further states that rectification proceedings qua the said mark are pending.
8. Appellant is a registered proprietor of identical trademarks in various international jurisdictions across Classes 03, 09, 14, 16, 18, 25 and 34, details whereof are as under:
COUNTRY APPLICATION/ TRADEMARK CLASSES DATE STATUS REGISTRATION NO.
Switzerland 2P-409348 14 February Registered
25, 1994
International 617536 14 March 28, Registered
registration 1994
Singapore T0212734G 14 April 10, Registered
2002
United 3874253 14 April 07, Registered
States of 2009
America
Australia 1643654 14 May 14, Registered
2014
Mongolia M-0617536 14 August Registered
12,
2014
Malaysia 2014056892 14 May Registered
15,2014
Israel 267951 14 May 14, Registered
2014
Signature Not Verified
Digitally Signed C.A.(COMM.IPD-TM) 72/2021 Page 4 of 6
By:SAPNA SETHI
Signing Date:13.02.2023
20:09:51
Canada TMA923180 14 May Registered
15,2014
Switzerland 682526 3,9,16,18, September Registered
25,34 18,2015
Indonesia IDM000583316 14 September Registered
22,2015
European 015100399 14 February Registered
Union 11,
2016
Switzerland 738044 14 April 29, Registered
2019
Switzerland 734221 9 March 04, Registered
2019
9. From the fore-going, it becomes evident that Appellant earliest registration is from the year-1994. Appellant has also been maintaining an website - www.louismoinet.com since 01st April, 2002, which showcases its various trademarks, and the same is accessible to consumers in India.
10. In view of the above, notwithstanding the registration of the cited mark, in the opinion of the Court, the application can proceed to the stage of advertisement without acceptance. In light of the above, present appeal is allowed with following directions:
(a) The impugned order is set-aside.
(b) Trade Marks Registry is directed to process the registration application for the subject mark.
(c) Subject mark be advertised without acceptance as per proviso of Section 20 of the Act, within a period of three months from today. On advertisement in the Trade Marks Journal, an intimation shall be sent by Trade Marks Registry to the registered proprietor of the cited mark.
(d) If there is any opposition, the same shall be decided on its own merits, Signature Not Verified Digitally Signed C.A.(COMM.IPD-TM) 72/2021 Page 5 of 6 By:SAPNA SETHI Signing Date:13.02.2023 20:09:51 uninfluenced by observations made hereinabove.
(e) Appellant shall also send a copy of the order passed today to the proprietor of competing/ cited mark.
11. With the above directions, the appeal is disposed of along with pending application(s), if any.
12. Registry is directed to supply a copy of the present order to the Trade Marks Registry at [email protected] or compliance.
SANJEEV NARULA, J FEBRUARY 8, 2023 d.negi Signature Not Verified Digitally Signed C.A.(COMM.IPD-TM) 72/2021 Page 6 of 6 By:SAPNA SETHI Signing Date:13.02.2023 20:09:51