4 judgments of the Chhattisgarh High Court, the Delhi High Court and 1 other court applying Trade Marks Act s.1, from 2023–2024, each with a headnote by BRB Legal.
Appeal dismissed and the return of the plaint for want of territorial jurisdiction upheld. The plaintiff relied on an FIR lodged by the Excise Department within Chhattisgarh, under which goods bearing the impugned mark were confiscated. The Division Bench held that the plaint nowhere alleged that the FIR was made against any officer of the defendant company, that the defendant resided and carried on business at Indore, and that there was no plea that it had sought an excise licence to sell within Chhattisgarh. A bald statement about a seizure by the police was not enough to show that the defendant sold the goods there or that any part of the cause of action arose there.
Appeal allowed and the interim injunction set aside. The Commercial Court had held that the word Rose was common and could not be monopolised, yet found SWEET ROSE LOLLIPOP deceptively similar to MADHUR ROSE POP LOLLIPOPS, giving no reason for that conclusion or for its parallel finding on packaging. The Division Bench held that the marks must be seen as a whole: the common elements ROSE and LOLLIPOP are descriptive of the product and cannot be monopolised, the appellant's mark led with its house name UNICON, and section 30(2)(a) protects use indicating the kind or quality of goods. On packaging, the colour schemes and placement differed, and a transparent top panel for displaying the product is common to the trade.
A refusal under section 11(1) fell on every ground. Evidence of use cannot be rejected for want of turnover and advertising figures where invoices, online material and the applicant's own registrations in other classes are on record. A cited mark shown as 'objected' in the search report cannot be treated as valid, subsisting and the prior user. The rule that a combination of two known words is not an invented word is correct but has no application to a device mark. And a certificate under section 65B of the Evidence Act is required only for an electronic record within the producer's own possession, control or custody, so none can be demanded for third party news articles, which the Registry can access and verify for itself.
The Registrar's restoration, on review, of an application treated as abandoned for want of prosecution was upheld. Rule 56(3) of the 2002 Rules says an application 'may be treated as abandoned', which vests a discretion and creates no deemed abandonment, unlike section 21(2) of the Act or Rule 45 of the 2017 Rules. With no provision in the Act to set aside an ex parte order and no grounds of review in section 127(c), the third ground in Order XLVII Rule 1 of the Code of Civil Procedure, any other sufficient reason, was properly invoked.
