15 judgments of the Bombay High Court, the Delhi High Court and 1 other court applying Trade Marks Act s.11(1), from 2022–2026, each with a headnote by BRB Legal.
Interim relief made absolute for infringement of copyright in the artwork of the UMANG label and for passing off. The plaintiff's copyright registration gave the year of publication as 2009 and its device mark application carried a user claim from April 2009, while the defendant's registration gave 2022, so the plaintiff had prima facie created and adopted the artwork first and the impugned artwork was a slavish reproduction. The defendant produced nothing to show independent creation, and had obtained registration for a cropped version of the artwork while using a different version in trade, which the Court read as showing dishonest intent. On passing off, certified turnover of about Rs 6.15 crore for 2022-23 established goodwill before the defendant began use, and the unexplained use of artwork differing from the registered cropped version amounted to misrepresentation.
Rectification allowed and MLOGRAND removed from the Register. Two independent grounds. First, the petition pleaded non-use and went unanswered, so the averment was deemed admitted and removal followed under section 47(1)(a) on that ground alone. Second, MLOGRAND is a colourable imitation of LEGRAND: the letter E was merely replaced by O, the dominant element GRAND was subsumed whole, the prefix M is insignificant, and the French pronunciation of the two is identical. The respondent had also applied for a device mark and abandoned it once opposed, which the Court read as evidence of mala fide intent to associate with the petitioners.
Refusal of a trade mark application set aside as ex facie unreasoned. The Court held that section 18(5) obliges the Registrar to record reasons for refusing an application, and that since section 91 provides an appeal, the order must contain reasons because they are the only basis on which its legality can be tested. Reasons supplied for the first time in the affidavit in reply, which found no place in the order itself, could not cure it. The Court also rejected the Registrar's position that a cited registered mark could only be met by proceedings under section 47 and that the hearing officer had no power to examine the actual user of the cited mark, holding that this would render section 12 entirely otiose. Following London Rubber, honest concurrent use is an independent provision to be interpreted liberally.
Refusal set aside on two grounds. The Registrar had relied on an inability to ascertain whether a rectification petition filed by the applicant against the cited mark was pending elsewhere. The Court held that the pendency of a rectification petition between the applicant and the rival claimant need not per se concern the Registrar, whose task is to evaluate the application under section 9 or section 11(1), and that an inability to verify it is no ground at all to refuse: if particulars were wanted, the applicant could have been asked for them. On the user claim, the Registrar had overlooked the licence document under which the applicant permitted a sister entity to use the mark. The Court also recorded that nothing in the Act prohibits a fresh application where an earlier one was treated as abandoned for non-response to the examination report, the merits never having been considered.
The only objection was the presence of a shared element in two prior marks. On a suggestion from the Court the applicant agreed to modify the device mark so that both word elements are written in a common font of equal size beneath the pictorial device, which made the mark sufficiently different from the citations.
The only commonality with the three citations was a French word meaning a large country house or castle, of which judicial notice may be taken that it is commonly contained in marks associated with the wine business. Likelihood of confusion is examined by reckoning the class of consumers, who for wines are limited, discerning and aware of that usage.
Two findings, both untenable. The marks were not phonetically and visually identical, each citation carrying only one of the two words in the applicant's device mark. And no reasons preceded the finding of dishonest adoption except that the applicant's mark came later, when a mere perusal of the applicant's corporate name shows the reason for its adoption.
Refusal of a device mark for hand saws set aside and the application directed to be accepted for advertisement. The order referred to both sections 9 and 11 although the examination report had raised only section 11, was completely unreasoned, and the grounds of decision followed about eighteen months later. On the merits, the cited marks were used for sewing and garment industry machines and for soldering and casting machines, which are neither identical nor similar to hand saws, and the appellant had produced invoices evidencing use by its predecessor in interest from October 2008 together with the deed of assignment. The Court held that the finding of mala fide adoption had no basis, and that withholding acceptance so as to avoid opposition or a passing off action is not a relevant consideration on an application for registration.
Refusal under sections 9 and 11(1)(a) set aside. Section 11(1) applies only where the mark applied for is identical or similar to an earlier mark and the goods or services are identical or similar. Here there was some similarity between the marks but the goods were not identical, the applicant's mark being for skin care preparations and the cited mark for a rust and stain remover used on stainless steel surgical instruments. Whether goods are similar cannot be decided merely by reference to the class in which the application is filed: goods within the same class may be different and goods in different classes may be similar. The determination takes account of multiple factors, including whether the goods can be used as substitutes, whether they are directly complementary, their origin and their intended purpose. The goods being dissimilar, section 11(1) had no application, and registration could be refused on that footing only if the proprietor of the earlier mark established that it is well known and that section 11(2) is satisfied. The absolute grounds relied on had not been raised in the examination report at all, and a mark must be compared as a whole rather than split into its components.
An unreasoned refusal that the Court called a copy and paste job, its grounds of decision recording conclusions that the marks were identical, the goods similar and the proprietor of the citations the prior user, with no attempt to engage the reply to the examination report. Two citations were abandoned and the other three remained merely opposed.
The order referred to both sections 9 and 11 where the examination report referred only to section 11, and called for interference on that ground. In any event the application was for a device mark in relation to services, a market place for farmers and artisans, while the citations were word marks registered for goods.
As is typical with orders of the Registrar, the order was cryptic and gave no reasons, and the grounds of decision did not engage with the applicant's submissions. Even so, the marks being near identical and the goods similar, no purpose would be served by interfering on that ground alone, so the merits were examined and the appeal dismissed.
Three appeals against refusals in classes 16, 35 and 42 were withdrawn on instructions and dismissed as withdrawn. No question was decided, so the refusals of February 2019 stand.
A refusal was upheld. The customer of average intelligence and imperfect recollection cannot be credited with the perspicacity to recall that one mark spelled the common word differently from the other, and the dominant part of both marks was the same distinctive surname. A 'since 1978' element in disproportionately small letters does not mitigate confusion, being the kind of element that changes from time to time. Section 34 failed because the user claimed for the complete mark as applied for was 2014, later than the cited proprietor's 2005.
ALPS applied to electrical goods is arbitrary, not descriptive, and the Registry's own practice accepts mountain names for goods unconnected with the geography. Two cited marks were abandoned and the third dissimilar. The refusal also rested on a user affidavit required only by rules made after the application was filed.
