Indian Kanoon - Search engine for Indian Law

Delhi High Court

Termo Isi Sistemleri Ticaret Ve Sanayi ... vs Registrar Of Trade Marks on 30 July, 2024

                          *          IN THE HIGH COURT OF DELHI AT NEW DELHI
                          %                                                      Date of decision: July 30, 2024
                          +                            C.A.(COMM.IPD-TM) 14/2023

                                     TERMO ISI SISTEMLERI TICARET VE SANAYI ANONIM
                                     SIRKETI                                    .....Appellant
                                                   Through: Mr. Anshuman Upadhyay, Mr.
                                                            Naseem, Mr. Apoorva Sharma and
                                                            Mr. Rahul Singh, Advocates
                                                                        Versus
                              REGISTRAR OF TRADE MARKS                 .....Respondent
                                            Through: Mr. Harish Vaidyanathan Shankar,
                                                     CGSC with Mr. Srish Kumar Mishra
                                                     and Mr. Alexander Mathai Paikaday,
                                                     Advocates
                          CORAM:
                          HON'BLE MR. JUSTICE SAURABH BANERJEE
                                                                J U D G M E N T (ORAL)

1. The appellant by virtue of the present appeal under Section 91 of the Trade Marks Act, 1999 1 read with Rule 156 of the Trade Marks Rules, 2017, seeks to impugn the order dated 01.03.2023 passed by the learned Registrar of Trade Marks/ respondent 2, for setting aside the condition imposed therein qua registration of the trade mark application no.4553823 of the appellant, for the mark in Class 35.

2. The appellant is a company established in 1967 in Istanbul, Turkey and is one of the global leaders in the industry of sale of electrical/electronic heating appliances under its mark 1 hereinafter referred to as the "TM Act"

hereinafter referred to as the "impugned order"

                           and                          .
                          3.         The       appellant,        after    coining    and        adopting   the       word

has been using it worldwide since 2006 and in India since 06.12.2007 to promote appellant's goodwill as well as products. The appellant has also secured registration of the domain name www.ecostar.com.tr in 2008, to advertise and promote its brand and products under its trademarks and ' '.

4. Of the various applications filed by the appellant for registration/s of its trademark in India in different classes, the appellant granted registration/s as under:-

TM application no. Trademark Class 4553820 09 4553821 11 4553823 35 4553824 37

5. Significantly, the appellant applied for registration of the trade mark (device) involved in the present appeal in all the aforesaid classes. In the trade mark application no. 4553823 in Class 35 filed by the appellant, the Trade Mark Registry 3 issued an Examination Report dated 10.08.20204 raising the following objections:-

"1. The Trade Mark application is open to objection on relative grounds of refusal under Section 11 of the Act because the same/similar trade mark(s) is/ are already on record of the registrar for the same or similar goods/services. The detail of same/similar trade marks is enclosed herewith.

The objection is raised under S.11(1) of the Trade Marks Act, 1999, as 3 hereinafter referred to as the "TMR"

hereinafter referred to as the "ER"

the mark is identical with or similar to earlier marks in respect of identical or similar description of goods or services and because of such identity or similarity there exists a likelihood of confusion on part of the public."

6. Additionally, in the said ER, the following trade marks were cited as well:-

7. Thereafter, the appellant in its response to the ER, on 10.09.2020, C.A.(COMM.IPD-TM) 14/2023 Page 3 of 7 Signature Not Verified Digitally Signed By:BABLOO SHAH Signing Date:06.08.2024 18:22:54 stated that "The Applicant's trademark is a device mark which has been artistically created as ." and also requested the learned respondent not to pass any adverse order without giving an opportunity of being heard.

8. Accordingly, the respondent after hearing the appellant on 28.02.2023, vide the impugned order allowed the application no. 4553823 for the trade mark in Class 35 filed by the appellant with the following noting:-

* MARK SHALL BE USED AS SUBSTANTIALLY REPRESENTED AND WITH NO RIGHT OVER ANY OF THE WORDS EXCLUSIVELY.

9. Aggrieved thereby the appellant has preferred the present appeal seeking to set aside the said impugned order.

10. At the outset, learned counsel for the appellant, reiterating his stand before the TMR as also the present appeal, submits that by virtue of the present appeal "... ...the appellant does not have to claim any right over the word-'Ecostar' in non-stylised form or in standard character form".

11. Thereafter, learned counsel for the appellant primarily seeks to contend that the respondent could not have imposed the above unnecessary condition/ disclaimer vide the impugned order while granting registration to the appellant vide application no. 4553823 for the trade mark in Class 35.

12. Learned counsel then seeks to contend that even otherwise the impugned order is not liable to sustain as it is contrary to Section 18(5) of the TM Act.

13. Lastly, learned counsel for the appellant seeks to contend that since C.A.(COMM.IPD-TM) 14/2023 Page 4 of 7 Signature Not Verified Digitally Signed By:BABLOO SHAH Signing Date:06.08.2024 18:22:54 the appellant has been granted registration/s for the same trade mark in Class/s 9, 11 and 37 of the TM Act, the appellant is entitled for the benefit of Section 12 of the TM Act.

14. In support of the aforesaid arguments, learned counsel for the appellant places reliance upon judgements passed by co-ordinate benches of this Court in Intellectual Property Attorneys Association vs The Controller General of Patents, Designs & Trade Marks & Anr.5 and Astral Ltd. vs Ashirvad Pipes Pvt. Ltd.6

15. Learned counsel for the respondent, at the outset submits that he does not wish to file any reply and/ or written submissions and seeks to proceed on the basis of the documents already on record.

16. Learned counsel for the respondent, straightaway supporting the impugned order passed by the respondent, seeks to contend that the appellant is estopped from either claiming or contending otherwise in view of Section 17(1) of the TM Act.

17. This Court has heard the learned counsel for the parties as also gone through the documents on record and the case laws cited by the learned counsel for the appellant.

18. Prior to proceeding for adjudicating the matter on merits, it is worthwhile to mention that though the learned counsel for the appellant had sought to place reliance upon Section 10(2) of the TM Act, however, the same was neither agitated nor pressed by him. Thus, this Court is refraining from adjudicating upon the said submission qua Section 10(2) of the TM Act.

W.P.(C) 3851/2019 dated 16.10.2019.

2023:DHC:1281.

19. Furthermore, admittedly, it is the own case of the appellant all throughout since inception before the TMR that by virtue of the present application for registration of the trade mark in Class 35 "... ...the appellant does not have to claim any right over the word- 'Ecostar' in non-stylised form or in standard character form". Meaning thereby, the appellant sought registration of the mark on a 'as is where is' basis as it was applied for.

20. As such, what has been recorded by the respondent in the impugned order is/ are that the "MARK SHALL BE USED AS SUBSTANTIALLY REPRESENTED AND WITH NO RIGHT OVER ANY OF THE WORDS EXCLUSIVELY.", which in the opinion of this Court, is merely recording the matter/s of fact as borne out from the own case of the appellant since the very inception. Therefore, the aforesaid noting made by the respondent in the impugned order can in no manner be treated as an unnecessary condition/ disclaimer as sought to be claimed by the appellant.

21. For the aforesaid reason, and even otherwise also the provisions of Section 18(5) of the TM Act are not applicable herein and the contention qua it sought to be raised by learned counsel for the appellant is rejected.

22. Moreover, the appellant cannot be allowed to plead/ argue by setting up a wholly new case which is contrary to its own stand all throughout, and that too at this appellate stage, to try and expand the scope of registration as granted by the respondent.

23. Also, the mere fact that the appellant has been granted registration/s for the same trade mark in Class/s 9, 11 and 37, is not sufficient, and in fact no, ground for the appellant for seeking benefit of C.A.(COMM.IPD-TM) 14/2023 Page 6 of 7 Signature Not Verified Digitally Signed By:BABLOO SHAH Signing Date:06.08.2024 18:22:54 Section 12 of the TM Act qua setting aside of the impugned order by this Court.

24. Lastly, this Court is of the opinion that the respondent has exercised sufficient discretion, both judicially and reasonably, especially after taking into consideration the own submission of the appellant that "... ...the appellant does not have to claim any right over the word-'Ecostar' in non- stylised form or in standard character form".

25. In view of the aforesaid findings, in the opinion of this Court, the judgments relied upon by the learned counsel for the appellant cannot come to the aid of the appellant as they have no direct bearing and/ or significance with the factual matrix involved herein.

26. Accordingly, since the appellant has not been able to make out a case for interfering with the impugned order, the present appeal is dismissed being bereft of any merit.

SAURABH BANERJEE, J.

JULY 30, 2024/akr C.A.(COMM.IPD-TM) 14/2023 Page 7 of 7 Signature Not Verified Digitally Signed By:BABLOO SHAH Signing Date:06.08.2024 18:22:54