Delhi High Court
M/S Subros Educational Society vs Union Of India on 19 May, 2022
Signature Not Verified
Digitally Signed
By:DEVANSHU JOSHI
Signing Date:20.05.2022
17:37:48
$~5
* IN THE HIGH COURT OF DELHI AT NEW DELHI
Date of decision: 19th May, 2022
+ C.A. (COMM.IPD-TM) 1/2021
M/S SUBROS EDUCATIONAL SOCIETY ..... APPELLANT
Through: Dr. Lalit Bhasin, Ms. Ananya
Marwah and Mr. Ajay Pratap Singh,
Advocates. (M:9810520379)
versus
UNION OF INDIA .....RESPONDENT
Through: Mr. Harish Vaidyanathan Shankar,
CGSC with Ms. Bushra S. Kazim and
Mr. Srish Kumar Mishra, Advocates.
CORAM:
JUSTICE PRATHIBA M. SINGH
Prathiba M. Singh, J.(Oral)
1. This hearing has been done through hybrid mode.
2. The Appellant - M/S. SUBROS EDUCATIONAL SOCIETY, has
filed the present appeal challenging the impugned order dated 15 th February,
2019 passed by the Senior Examiner, Registrar of Trademarks, New Delhi.
By the said order, the mark 'Step By Step High School', applied for by the
Appellant, vide Trademark Application bearing No.2891488 in Class 41, has
been refused registration, under Sections 9 & 11 of the Trade Marks Act,
1999. The operative portion of the order dated 15 th February, 2019 is set out
below:
"With reference to the above and request on Form
TM-M dated 09/02/2019. It has been decided by
the Registrar of Trademarks to inform you that
hearing in respect of above application was held
on 26/12/2018 and the said application is refused
on the following Grounds:
* The applicant advocate Ranjan Jha appeared. I
Signature Not Verified
Digitally Signed
By:DEVANSHU JOSHI
Signing Date:20.05.2022
17:37:48
have heard the argument and also perused the
documents available on record. The same and
similar mark is already on record, hence,
objection under Section 9 and 11 is sustained,
application is refused for registration."
3. The details of the trademark Application bearing No.2891488 in Class
41 relating to the mark 'Step By Step High School' is set out below:
4. A perusal of the above order shows that the same is for 'Step By Step
High School', which is a variant of the Appellant's registered trademark.
The Appellant has several similar registrations, such as "Step By Step"
bearing No.1301297, as well as "Step By Step School" bearing No.
Signature Not Verified
Digitally Signed
By:DEVANSHU JOSHI
Signing Date:20.05.2022
17:37:48
1549619.
5. The mark 'Step By Step' has been used by the Appellant in respect of
educational services since the year 1990. The said mark has been used as a
name of the play school as also higher levels of schooling and has acquired
goodwill and reputation. It is submitted by Mr. Bhasin, ld. Counsel for the
Appellant that in view of the expansion of its branches in other fields of
educational services, the mark "Step By Step High School" was applied for.
6. Accordingly, the rejection of the said mark, in the face of the earlier
registrations in the name of the Appellant for the mark 'Step by Step', as
also the long user, is unsustainable. The impugned order dated 15th
February, 2019 is, accordingly, set aside.
7. The application bearing No.2891488 for the registration of the mark
'Step By Step High School' shall proceed for advertisement in the trademark
journal. The said mark shall be advertised within a period of four months. If
there is any opposition to the said trademark application, the opposition shall
be decided in accordance with law, without being effected by any of the
observations made in the present order.
8. Let the present order be served upon the Respondent - Registrar of
Trademarks, New Delhi, through Mr, Harish Vaidyanathan Shankar, ld.
CGSC.
9. The present appeal is allowed and disposed of, in the above terms. All
pending applications are also disposed of.
PRATHIBA M. SINGH
JUDGE
MAY 19, 2022/dk/ss
