(Oa/6 vs The Registrar Of Trademarks
2023 Latest Caselaw 10132 Mad

    2023:MHC:3691

                                                                       (T)CMA(TM).Nos.79, 155 of 2023

                                  IN THE HIGH COURT OF JUDICATURE AT MADRAS

                                                 DATED: 10.08.2023

                                                     CORAM

                                  THE HONOURABLE MR.JUSTICE SENTHILKUMAR
                                              RAMAMOORTHY

                                         (T)CMA(TM).Nos.79, 155 of 2023
                                             (OA/6, 7/2020/TM/CH)

                  Foodvista India Pvt. Ltd.,
                  “Indiqube-Delta”,
                  No.6, 14th Main Road,
                  HSR Layout, 5th Sector,
                  Bangalore – 560 102.                                           ...Appellant
                                                                                 in both Appeals

                                                        Vs.

                  The Registrar of Trademarks,
                  The Trademarks Registry,
                  IP Building, GST Road,
                  Guindy, Chennai – 600 032.                                     ...Respondent

in both Appeals

Prayer in (T)CMA(TM).No.79 of 2023: Transfer Civil Miscellaneous Appeal (Trademarks) filed under Section 91 of the Trademarks Act, 1999 to set aside the order of refusal dated 29.04.2019 issued by the respondent in Application No.3104890 in Class 43 and consequently proceed with the application in the manner known to law.

https://www.mhc.tn.gov.in/judis (T)CMA(TM).Nos.79, 155 of 2023

Prayer in (T)CMA(TM).No.155 of 2023: Transfer Civil Miscellaneous Appeal (Trademarks) filed under Section 91 of the Trademarks Act, 1999 to set aside the order of refusal dated 29.04.2019 issued by the respondent in Application No.3104893 in Class 43 and consequently proceed with the application in the manner known to law.

                                  For Appellant    :    Mr.S.Diwakar
                                                        for M/s.FACTUM LAW

                                  For Respondent   :    Mr.R.Rajesh Vivekanandhan
                                                        Deputy Solicitor General


                                              COMMON JUDGMENT

The appellant is in the business of curating food menus, cooking,

packaging and delivering multi cuisine food through the platform named as

"FRESHMENU". The appellant asserts that the word mark "FRESHMENU"

has been used continuously since 19.08.2014 in respect of the above mentioned

services and the device mark

has been used continuously since 01.07.2015. Applications for registering these

marks were filed on 24.11.2015. In support of these applications, the appellant

had submitted evidence of use. Such evidence included the registration of the

https://www.mhc.tn.gov.in/judis (T)CMA(TM).Nos.79, 155 of 2023

domain name "www.freshmenu.com" on 07.01.2000, the invoices issued from

26.09.2014 and advertisements placed to promote the appellant's services. In

response to the word mark application, the Trade Marks Registry submitted an

examination report raising objections both under Section 9(1)(b) of the Trade

Marks Act, 1999 (Trade Marks Act) and Section 11(1) thereof as regards the

word mark. The objection under Section 9(1)(b) of the Trade Marks Act was on

the ground that the mark is descriptive of the quality and kind of the service.

The relative ground of objection under Section 11 was on the basis of an

application for registration of the device mark 'Reliance Fresh Signature Store',

which had been accepted and advertised. As regards the device mark, the only

objection that was raised in the examination report was under Section 11(1) of

the Trade Marks Act by citing the application of the appellant herein.

2. The appellant submitted a reply to the examination report denying that

the mark "FRESHMENU" contains words that designate the kind, quality, etc.

of the services. In this connection, learned counsel for the appellant also relies

on the proviso to Section 9(1). The said proviso is set out below:-

"PROVIDED that a trade mark shall not be refused registration if before the date of application for

https://www.mhc.tn.gov.in/judis (T)CMA(TM).Nos.79, 155 of 2023

registration it has acquired a distinctive character as a result of the use made of it or is a well-known trade mark."

3. As regards the relative ground of objection, the appellant stated that

there is no likelihood of confusion between the appellant's mark and the mark

cited by the Trade Marks Registry. Pursuant to a hearing, the order dated

30.03.2019 was issued and the operative part of the said order is set out below:-

"The trade mark applied for is objectionable under Section 9 of the Act. The application is accordingly refused."

4. On receipt of this order, the appellant made a request for the grounds

of decision under Rule 36(1) of the Trade Marks Rules, 2017 (The Trade

Marks Rules). In response, the communication dated 29.04.2019 was received.

The operative part of the said communication is set out below:-

"*Adv Reshma appeared Mark is descriptive with respect to quality for the applied description of services.

Hence objection U/S 9 cannot be waived Refused accordingly *Applied mark FRESH MENU is highly descriptive

https://www.mhc.tn.gov.in/judis (T)CMA(TM).Nos.79, 155 of 2023

to the applied description of FOOD AND DRINK Hence objection raised U/S 9(1) (b) cannot be waived and refused accordingly"

5. Learned counsel for the appellant assails the impugned orders,

including the grounds of decision, on the basis that it is completely unreasoned

and fails to take into consideration the evidence of use and acquired

distinctiveness.

6. Mr.Rajesh Vivekananthan, learned Deputy Solicitor General, submits

that the relevant marks are clearly descriptive and, therefore, the orders

impugned in these appeals do not warrant interference.

7. The impugned order, which is set out above, is undoubtedly bereft of

reasons. Notwithstanding Rule 36(1) of the Trademark Rules, it is incumbent

on any authority exercising quasi judicial powers to specify the reasons for its

decisions. In this case, even the grounds of decision do not deal with the

evidence adduced by the appellant. Instead, the grounds of decision merely

state that the objection under Section 9 cannot be waived, in view of the stated

https://www.mhc.tn.gov.in/judis (T)CMA(TM).Nos.79, 155 of 2023

descriptive nature of the mark. On this issue, it is also pertinent to note that the

proviso to Section 9(1) has not been taken into consideration while rejecting the

application.

8. In these circumstances, the orders impugned in these appeals are

unsustainable. Consequently, these orders are set aside and the matter is

remanded for reconsideration by the Registrar of Trade Marks. The Registrar of

Trade Marks is directed to reconsider these applications by taking into account

the entire evidence placed on record by the appellant and by providing a

reasonable opportunity of hearing to the appellant. A reasoned order shall be

issued thereafter within a maximum period of two months from the date of

receipt of a copy of this order. It is made clear that the merits of the

applications have not been considered in these appeals. No costs.

10.08.2023 Index:Yes Speaking order Neutral Citation:Yes hvk

https://www.mhc.tn.gov.in/judis (T)CMA(TM).Nos.79, 155 of 2023

To

The Registrar of Trademarks, The Trademarks Registry, IP Building, GST Road, Guindy, Chennai – 600 032.

https://www.mhc.tn.gov.in/judis (T)CMA(TM).Nos.79, 155 of 2023

SENTHILKUMAR RAMAMOORTHY,J.

hvk

(T)CMA(TM).Nos.79, 155 of 2023 (OA/6, 7/2020/TM/CH)

10.08.2023

https://www.mhc.tn.gov.in/judis