Delhi High Court: While deciding a case in which an appeal was filed challenging the order passed by the Senior Examiner of Trade Marks (Senior Examiner), wherein the application of the appellant seeking registration of its mark “BRAZZERS” in Class 35 was rejected, the Single Judge Bench of Navin Chawla, J. held that the Senior Examiner should have granted an opportunity to the appellant to change the user detail in its application before rejecting it.
Facts of the Case
The appellant filed the application for registration of trade mark “BRAZZERS” in Class 35 in respect of “online retail store services featuring clothing, mobile phone cases, golf balls, key chains, and mugs”. The Registrar of Trade Marks issued an Examination Report in 2015 raising an objection under Section 11 of the Trade Marks Act, 1999 (Act) on the grounds that similar trade marks already existed on record in relation to same or similar goods or services. Even though the appellant filed a reply to the Examination Report in 2016, the application for registration of trade mark was rejected by an order in 2019 by the Senior Examiner holding the mark to be objectionable under Sections 9 and 11 of the Act.
The appellant filed for Statement of Grounds of Decision under Rule 36(1) of the Trade Marks Rules, 2017 (2017 Rules), which were provided as under:
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The application for registration of mark had been filed in 2013 claiming user of the mark since 2012. The fact that the mark was being used since 2012 was of no help as the documents filed along with did not validate the claimed user show from the goods of 2012.
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Identical and/or similar prior trade mark was already on the Register of Trade Marks and thus, application for registration was refused under Section 11(1) of the Act.
Submissions on behalf of the Appellant
Counsel for the appellant contended that Senior Examiner had erred in law by rejecting the application on the ground that the appellant was unable to prove its user of the mark since 2012. It was submitted that the Senior Examiner should have given an opportunity to the appellant to amend the user as “proposed to be used” or of any other date but, should not have rejected the application on this ground.
Counsel also submitted that some of the marks referred to by the Registrar of Trade Marks were for different Class of goods and though one of the marks referred to was for the same Class as the one applied for by the appellant, but the services covered were different as the applicant therein was engaged in the business of manufacturing precision astronomical telescopes. Further, it was submitted that the appellant was also the registered proprietor of its mark in various countries and the said mark was registered in India for other Classes, namely, 9, 38, 41 and 42.
Submissions on behalf of the Respondent
Counsel for the Respondent submitted that the marks referred to were deceptively similar to the mark applied for by the appellant and even the goods and services for these marks were similar to that of the appellant, being clothing and undergarments.
Analysis, Law, and Decision
The Court opined that it was evident from the Examination Report that the marks referred to in the case were in different Class of goods and the application of the appellant was for “online retail store services” and not for goods per se. Therefore, the Senior Examiner could not have refused the application of the appellant at this stage referring to already registered marks. Moreover, the mark that was said to be in the same Class as that of the appellant, had been registered for the services, namely, “Goods/Service Advertising, Business Management, Business Administration, Office Functions”. Thus, these services were different from the services for which the appellant applied for registration of its mark.
On the objection of the user of the mark being not proved, the Court opined that the Senior Examiner should have granted an opportunity to the appellant to change the user detail in its application and as stated by the counsel for the appellant, the user detail would be changed to “proposed to be used”. Thus, the Court allowed the appeal by setting aside the Order of 2019 and the Statement of Grounds of Decision and directed that the application of the appellant should be proceeded for advertisement on the claim of the mark being “proposed to be used”.
[Licensing IP International S.AR.L. v. Senior Examiner Trade Marks, 2022 SCC OnLine Del 3746, decided on 9-11-2022]
Advocates who appeared in this case :
For the Appellant(s): Advocate Peeyosh Kalra;
Advocate V. Mohini;
Advocate Udayvir Rano;
For the Respondent(s): CGSC Harish Vaidyanathan Shankar;
Advocate Srish Kumar Mishra;
Advocate Sagar Mehlawat;
Advocate Alexander Mathai Paikaday.