The Bombay High Court allowed a writ petition seeking to set aside the Order dated 23rd August 2021 passed by the Examiner of Trade Marks. The Court observed that the finding of the subject mark not being registered should have been supported by cogent reasons which the impugned order lacks.
Brief Facts:
There was initially an order passed on 23rd August 2021. The Petitioner had upon receiving the said Order called upon the Senior Examiner of Trade Marks to furnish reasons as the said Order was an un-reasoned order. The said Order had only referred to the provision Viz. Section 11(1) of the Trade Marks Act, 1999 and had further referred to cited marks in Provisional Refusal which were considered to be identical or similar having similar goods/services. The same was held likely to cause confusion among public/probable consumers. The applied mark for registration was accordingly not accepted and refused. The second order dated 9th November 2022 was passed by the Senior Examiner of Trade Marks, upholding the order dated 23rd August 2021.
Contentions of the Petitioners:
The Learned Counsel for the Petitioner contended that the second order dated 9th November 2022 is nothing but a replica of the said order dated 23rd August 2021. The same observations are recorded in the impugned order for arriving at the conclusion that the subject mark applied for is not registrable. He argued that there were detailed submissions made by the Petitioner from which it is apparent that the Petitioner had made out a case as to the subject mark having distinctiveness. There were submissions that a comparison of the subject mark with the cited marks would make it apparent that the subject mark is a unique and coined device and not merely a use of the words “I AM” as in the cited marks. The subject mark is completely different in all respects i.e., phonetically, visually, and structurally from the cited mark when viewed in its entirety. He has accordingly submitted that the impugned order be set aside and the matter be remanded back for consideration.
Contentions of the Respondent:
The Learned Counsel for the Respondent contended that there are reasons in the impugned order that the cited marks are identical/similar having similar goods/services and the same are likely to cause confusion among public/probable consumers to support the finding that the applied mark is not registrable. He submitted that the impugned order does not merely refer to Section 11(a) of the Trade Marks Act but is a reasoned order. He has accordingly supported the impugned order dated 9th November 2022.
Observations of the Court:
The Court noted that there is merit in the contentions on behalf of the Petitioners. There are detailed submissions that have been placed on record in support of the Petitioner’s case. Further, the subject mark has been registered in the European Union and New Zealand. There are submissions on the subject mark being required to be viewed in its entirety and for which the aforementioned decisions have been relied upon by the Petitioner.
The Court observed that the impugned order did not make any reference to the submissions and/or the authorities relied upon by the Petitioner. Thus, these submissions and authorities have not been considered in holding that the cited marks are identical/similar having similar goods/services. There is no independent application of mind on the part of the Senior Examiner of Trade Marks to the Reply submissions canvassed by the Petitioner and thus the impugned order cannot be stated to be a reasoned order as contended on behalf of the Respondent. The finding of the subject mark not being registered should have been supported by cogent reasons which the impugned order lacks.
The decision of the Court:
The Bombay High Court, allowing the petition, held that the impugned order dated 9th November 2022 passed by the Respondent / Senior Examiner of Trade Marks is set aside and the matter remanded back to consider the submissions and the material on record in support of the Petitioners case in the Reply and thereafter give a reasoned order.
Case Title: I Am The Ocean, LLC vs Registrar of Trade Marks
Coram: Hon’ble Justice R.I. Chagla
Case no.: INTERIM APPLICATION (L) NO.4264 OF 2023 in COMM MISCELLANEOUS PETITION (L) NO.3899 OF 2023
Advocate for the Petitioner/Applicant: Mr. Hiren Kamod
Advocate for the Respondent: Mr. Shreyas Deshpande
Read Judgment @LatestLaws.com
Picture Source :
