Essential Export Sociedad ... vs The Registrar Of Trade Marks
2022 Latest Caselaw 2231 Del

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                          *      IN THE HIGH COURT OF DELHI AT NEW DELHI
                                                                     Date of Decision: 20th July, 2022
                          +                    C.A. (COMM.IPD-TM) 131/2022
                                 ESSENTIAL EXPORT SOCIEDAD ANONIMA ..... Appellant
                                              Through: Ms. Kajal Arora, Advocate.
                                                       (M:7838491707)
                                              versus

                                 THE REGISTRAR OF TRADE MARKS            ..... Respondent

Through: Mr. Harish Vaidyanathan Shankar, CGSC with Mr. Srish Kumar Mishra, Mr. Sagar Mehlawat and Mr. Alexander Mathai Paikaday, Advocates. (M:9810788606) CORAM:

JUSTICE PRATHIBA M. SINGH

Prathiba M. Singh, J.(Oral)

1. The present appeal has been filed challenging the impugned order dated 30th March, 2021, by which the multi-class trademark application bearing no. 3639686 for the mark 'TOTTO', has been rejected by the Registrar of Trade Marks. The Appellant, Essential Export Sociedad Anonima, a Costa Rica based company, filed an application for registration of the mark 'TOTTO' on 20th September, 2017. Ld. Counsel for the Appellant submits that the Appellant adopted the mark internationally in 1989, and in India since 2007.

2. An examination report was issued on 26th October, 2017, citing various similar marks and raising an objection under Section 11 of the Trade Marks Act, 1999 (hereinafter "the Act"). There are six cited marks out of

Signature Not Verified Digitally Signed By:DEVANSHU JOSHI Signing Date:22.07.2022 10:54:08 which five relate to the mark "TOTO" and one relates to the mark "TOTTO". The details of the cited marks as given in the examination report are extracted hereinbelow:

3. In response to the examination report dated 18th December, 2017, the Counsel for the Appellant gave the status of the various cited marks in the examination report, and argued that the Applicant's mark deserves to

Signature Not Verified Digitally Signed By:DEVANSHU JOSHI Signing Date:22.07.2022 10:54:08 proceed for registration. As per the response to the examination report, application nos. 2647511 and 2809076 in class 18 have been opposed, application no. 1111587 in class 25 is deemed to have been removed from the register, application no. 1323215 in class 25 is in respect of different description of services, and application nos. 3016329 and 3079933 in class 25 are pending.

4. However, vide the impugned order, the Examiner of Trademarks has rejected the application on the ground that two applications, nos. 2647511 and 2809076, are for similar marks for similar goods and services. Hence, the Section 11 of the Act objection has been upheld.

5. Ms. Kajal Arora, ld. Counsel for the Appellant submits that the Registrar of Trademarks has failed to consider the fact that the two marks bearing nos. 2647511 and 2809067, which are cited against the Appellant, have already been opposed by the Appellant. Further, as mentioned above, other marks have been either removed or are still pending registration. Thus, these facts deserve to be considered before the mark of the Appellant can be rejected.

6. Heard. The Court has perused the record and finds the status of all the cited marks is as under:

                               S.No.                    Marks                       Status

                               1                        2647511                     Opposed by
                                                                                    Appellant
                               2                        2809076                     Opposed by
                                                                                    Appellant




Signature Not Verified
Digitally Signed
By:DEVANSHU JOSHI
Signing Date:22.07.2022
10:54:08
                                 3                        1111587                    Removed

                                4                        3016329                    Abandoned

                                5                        3079933                    Abandoned

                                6                        1323215                    Registered in
                                                                                    Class 7

7. Insofar as the last mark, no. 1323215 is concerned, the said mark is registered but the services for which the mark is in use are different from the goods and services in respect of which the Appellant seeks registration.

8. In the overall facts, this Court is of the opinion that the Examiner ought to consider the above facts and status of the cited marks, and then take a fresh look at the trademark application of the Appellant.

9. The impugned order dated 30th March, 2021 is, accordingly, set aside.

10. The application is remanded for re-examining by the Examiner of Trademarks, and the examination shall be conducted in accordance with law within 6 months.

11. The appeal is allowed in the above terms.

12. Let the present order be intimated to the Registrar of Trade Marks through ld. CGSC, Mr. Harish V. Shankar, for necessary action.

PRATHIBA M. SINGH JUDGE JULY 20, 2022/dk/ss

Signature Not Verified Digitally Signed By:DEVANSHU JOSHI Signing Date:22.07.2022 10:54:08