Madras High Court
Dated: 22.08.2023 vs Assistant Registrar Of Trade ... on 22 August, 2023
2023:MHC:3844
IN THE HIGH COURT OF JUDICATURE AT MADRAS
DATED: 22.08.2023
CORAM
THE HONOURABLE MR.JUSTICE SENTHILKUMAR RAMAMOORTHY
(T)CMA(TM)/91/2023
(OA/19/2020/TM/CH)
M/s.VP Enterprises,
A Partnership Firm,
Represented by its Partner Mr.Pulipati Venkatesh,
105/71, 1st Main, 4th Cross,
Guru Raghavendra Layout, JP Nagar, 8th Phase,
Bangalore 560 078, Karnataka, India. ... Appellant
-vs-
Assistant Registrar of Trade Marks,
Intellectual Property Office,
Intellectual Property Office Building,
G.S.T.Road, Guindy, Chennai-600 032
Tamil Nadu, India. ... Respondent
PRAYER: Transfer Civil Miscellaneous Appeal (Trademarks) filed
under Section 91 of the Trademarks Act, 1999, prays that (a) the order
of the Senior Examiner of Trade marks be dismissed and the Subject
Trade Mark under Application Number 3894824 be allowed to
proceed to registration.
For Appellant : Mr.B.Karthik
1/7
https://www.mhc.tn.gov.in/judis
For Respondent : Mr.P.G.Santhosh Kumar, SPC
**********
JUDGMENT
The appellant had applied for the registration of the composite
mark set out below:
In the application dated 19.07.2018, the appellant had stated that the
mark was being used by the appellant or its predecessor-in-title since
02.06.2018 in relation to the provision of gym services and related
sporting activities. Upon examination, the Registrar of Trade Marks
raised an objection under Section 11(1) of the Trade Marks Act 1999
(The Trade Marks Act) by citing conflicting marks.
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2. In response to these objections, the appellant submitted a
reply dated 25.08.2018 stating that the mark is unique and distinctive
and that the cited marks are completely different from the appellant's
mark. A personal hearing was provided and order dated 17.09.2019
was issued, without assigning reasons, rejecting the application
under Section 11(1)(a) and 11(1)(b) of the Trade Marks Act. Hence
this appeal.
3. Learned counsel for the appellant pointed out that the
appellant had produced evidence of use of the mark from 02.06.2018
by placing on record invoices issued by the appellant in respect of
club membership subscription. He pointed out that the said invoices
contain the composite mark for which the application was submitted.
He also referred to the advertisements posted on Facebook. In
addition, learned counsel relied on the certificate of registration
granted in respect of an identical device under Trademark
No.3894825 with effect from 23.07.2018.
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4. As regards the allegedly conflicting marks, learned counsel
contends that the first cited mark was not renewed after 2013. TM
Application No.1698350 was withdrawn and TM Application
Nos.2198253, 2927706 and 2927714 were abandoned. Even as regards
the other cited marks, learned counsel contends that the composite
mark of the appellant is clearly distinguishable from the said marks,
the said marks were applied for in relation to dissimilar services and
that the same is evident from the examination report.
5. In response, learned special panel counsel submits that the
impugned order was issued in view of the existence of multiple
marks which are deceptively similar to the mark for which the
appellant applied for registration. Therefore, he submits that the
impugned order does not call for interference.
6. The composite mark for which the appellant seeks
registration contains a device of a silhouette of persons swimming,
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working out and playing football. The words “LOTUS FITNESS” are
found along with the said device. There is evidence of use of the
mark from 02.06.2018 by way of invoices issued by the appellant. The
registration certificate in relation to TM No.3894825 reveals that a
mark containing an identical device (without the words “LOTUS
FITNESS”) was registered in relation to the same services in favour
of the appellant.
7. As correctly contended by learned counsel for the appellant,
the marks cited in the examination report were not used by the
respective applicant in relation to fitness services. Many of the cited
marks were abandoned, withdrawn or the registration in relation
thereto was not renewed. Even otherwise, when looked at as a
whole, the composite mark of the appellant appears to be distinctive
and distinguishable from the said marks.
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8. When all these facts and circumstances are considered
holistically, the impugned order is unsustainable. These facts and
circumstances also justify directing that the application be directed to
proceed to advertisement. Consequently, (T)CMA(TM)/91/2023 is
allowed by setting aside the impugned order and directing that the
appellant's application should proceed to advertisement. Thereafter,
the application may be dealt with in accordance with the Trade
Marks Act and the rules framed thereunder. There shall be no order
as to costs.
22.08.2023
Index : Yes / No
Internet : Yes / No
Neutral Citation : Yes/No
kal
https://www.mhc.tn.gov.in/judis
SENTHILKUMAR RAMAMOORTHY,J
kal
(T)CMA(TM)/91/2023
(OA/19/2020/TM/CH)
22.08.2023
https://www.mhc.tn.gov.in/judis
