Delhi High Court
Shell Brands International Ag vs The Registrar Of Trade Marks on 28 April, 2023
2023:DHC:2955
$~5
* IN THE HIGH COURT OF DELHI AT NEW DELHI
% Date of Decision : 28th April, 2023
+ C.A.(COMM.IPD-TM) 27/2021
SHELL BRANDS INTERNATIONAL AG ..... Appellant
Through: Mr.Anirudh Bakhru, Ms.Neeharika,
Mr.Raghav Vig, Ms.Sejal Tayal,
Ms.Vijay Laxmi Rathi, Mr.Umang
Tyagi, Mr.Naqeeb Nawab and
Mr.Avirup Benjamin, Advocates.
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.
CORAM:
HON'BLE MR. JUSTICE AMIT BANSAL
AMIT BANSAL, J. (Oral)
1. The present appeal was filed before the Intellectual Property
Appellate Board (IPAB) and pursuant to the enactment of Tribunal Reforms
Act, 2021, the present appeal has been received on transfer.
2. This appeal has been filed impugning the order dated 15th March,
2018 passed by the Senior Examiner of Trademarks in respect of
Application No.2365543 for the mark in class 4.
Signature Not Verified
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BANSAL
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3. Notice in the appeal was issued on 5th August, 2019, no reply has
been filed.
4. The brief facts leading to the filing of the present appeal are as under:
4.1. The appellant is a member of the Shell Group of Companies, of which
Royal Dutch Shell Plc is the parent company.
4.2. The Shell Group of Companies is engaged in the business of
exploring and producing oil and gas, providing energy solutions and
petrochemicals, producing and selling fuels for automobiles, ships and
planes.
4.3. The appellant applied for registration of the aforesaid mark for oils,
greases, lubricants and fuels in class 4 vide application dated 18th July,
2012 claiming user since 1st July, 2005.
4.4. In the application, the appellant has sought registration of the device
of the drum bearing colour combination of red and yellow and had
only claimed rights in the said combination of the colour and not in
the device of drum.
4.5. The said mark was examined and an objection was raised under
Sections 11 and 9(1)(b) of the Trade Marks Act, 1999. The appellant
filed response to the examination report on 13th March, 2018.
Subsequently, a hearing was given to the appellant and pursuant
thereto, the impugned order was passed.
4.6. The refusal order was posted on 15th March, 2018, and the grounds for
rejection were provided on 26th July, 2018.
5. Counsel for the appellant has made following submissions:
i. While taking the ground of Section 11(1) for refusal of
registration, the examination report failed to provide any marks
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similar to the impugned mark.
ii. None of the four grounds referred to in the impugned order are
relevant for the adjudication of the present trademark application.
iii. There was no mandatory requirement for filing a user affidavit.
6. Per contra, the counsel for the respondent submits that under Rule 27
of the Trademark Rules, 2002, the Registrar has been given discretion to call
upon an applicant to file a user affidavit.
7. I have heard the counsels for the parties.
8. One of the most glaring aspects of the impugned order is that while
the respondent has placed reliance on Section 11 of the Trade Marks Act to
reject the application of the appellant, it does not provide any similar or
identical earlier trademarks in support of the said contention. In the absence
of providing similar/identical marks, an objection under Section 11 cannot
be taken at all.
9. Insofar as the objection under Section 9(1)(b) of Trade Marks Act is
concerned, the impugned order has simply reproduced the language of
Section 9(1)(b) without stating as to how the impugned mark falls under any
of the grounds provided in Section 9(1)(b).
10. Rule 27 of the Trademark Rules 2002, which was the applicable rule
at the time when the present application was filed, is set out below:
"27. Statement of user in applications.--An application to
register a trade mark shall, unless the trade mark is proposed
to be used, contain a statement of the period during which, and
the person by whom it has been used in respect of the goods or
services mentioned in the application. The Registrar may
require the applicant to file an affidavit testifying to such
user with exhibits showing the mark as used."
Signature Not Verified
Digitally Signed By:AMIT
BANSAL
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11. A perusal of the aforesaid rule would show that there is no mandatory
requirement for an applicant to file a user affidavit. Discretion has been
given to the Registrar to require an applicant to file a user affidavit.
However, in the present case, it is an admitted position that the Registrar
never called upon the applicant to file a user affidavit. Therefore, refusal on
the aforesaid grounds is unsustainable.
12. I have perused various judgments referred to in the impugned order.
None of the aforesaid orders have any correlation to the rejection of the
present trademark application.
13. In view of the above, the present appeal is allowed, the impugned
order dated 15th March, 2018 is set aside.
14. The Registrar is accordingly directed to proceed with the
advertisement of the subject trademark application. Let the same be
advertised within a period of three months.
15. If there is any opposition to the said application, the same shall be
decided on its own merits without being affected by the observations made
herein.
16. The Registry to supply a copy of the present order to the Trade Marks
Registry at [email protected] for compliance.
AMIT BANSAL, J
APRIL 28, 2023
sr
Signature Not Verified
Digitally Signed By:AMIT
BANSAL
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