Madras High Court
Dated: 28.08.2023 vs The Assistant Registrar Of Trade ... on 28 August, 2023
2023:MHC:3926
1
IN THE HIGH COURT OF JUDICATURE AT MADRAS
DATED: 28.08.2023
CORAM
THE HONOURABLE MR.JUSTICE SENTHILKUMAR
RAMAMOORTHY
(T)CMA(TM)/142/2023
(OA/19/2019/TM/CHN)
British Engines (UK) Limited
11 Glasshouse Street, St Peters,
Newcastle upon Tyne,
Tyne and Wear, NE6 1BS,
United Kingdom ... Appellant
-vs-
The Assistant Registrar of Trade Marks
Trade Mark Registry Chennai,
Boudhik Sampada Bhawan,
G.S.T.Road, Guindy,
Chennai 600 032. ... Respondent
PRAYER: Transfer Civil Miscellaneous Appeal (Trademarks) filed
under Section 91 of the Trademarks Act, 1999, prays that the order
issued by the respondent dated 05 October 2018 received by us on
10th October 2018 be set aside and the Application No.2769368 for the
trademark
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2
in Classes 6,7,41 and 42 be allowed to proceed to registration.
For Appellant : Mr.R.Rajesh
for M/s.De Penning and De Penning
For Respondent : Mr.S.Diwakar, SPC
**********
JUDGMENT
The appellant is a company incorporated in the United
Kingdom. It was incorporated under the corporate name BRITISH
ENGINES (UK) LIMITED. An application was filed by the appellant
on 07.07.2014 for registration of the following mark
in classes 6, 7, 41 and 42.
2. Upon examination, objections were raised under Sections
9 and 11 of the Trade Marks Act, 1999, (the Trade Marks Act) on
17.11.2015. In response to the examination report, the appellant
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submitted a response on 21.04.2016. After hearing, by order dated
20.07.2018, the application was rejected under Sections 9 and 11 of the
Trade Marks Act. The appellant requested for the grounds of
decision under Rule 36(1) of the Trade Marks Rules, 2017, and the
grounds of decision were provided on 05.10.2018. This appeal is
presented under the above facts and circumstances.
3. Learned counsel for the appellant invited my attention to
the application for registration and pointed out the following: first,
that the trade mark is a device mark which traces its origin from the
corporate name of the appellant; and secondly, that the mark is not
applied to engines and, consequently, cannot be characterized as
descriptive of the goods or the nature, features or characteristics
thereof. He next placed for consideration the registrations obtained in
respect of an identical mark in multiple jurisdictions outside India.
4. By drawing reference to the reply to the examination
report, learned counsel pointed out that the Section 9 objection was
responded to by stating that the trade mark is a device mark
consisting of the words 'BRITISH ENGINES', written in a stylized
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manner, along with a logo. In addition, he pointed out that the
appellant had also stated that the trademark has no reference to the
character or quality of the goods/services.
5. As regards the objection under Section 11, learned counsel
submitted that the appellant stated in the reply that the marks cited
in the examination report do not fall within the classes 6, 7 and 42.
Even as regards the marks in class 41, the appellant stated that TM
No.1255318 and 1268041 were not renewed. Moreover, it was stated
that only the prefix 'BRITISH' is common to the appellant's mark and
the cited marks. Since the comparison should be between the marks
as a whole, learned counsel contended that the objections are
untenable.
6. In support of these contentions, learned counsel for the
appellant referred to and relied on the following precedents:
(i) Dubai Islamic Bank v. Union of India, dated
04.12.2019 in W.P.(C).No.12749 of 2019, particularly
paragraphs 8 to 11 thereof.
(ii) Abu Dhabi Global Market v. Registrar of
Trademarks, Delhi, 2023 SCC OnLine Del 2947,
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particularly paragraphs 24 and 25 thereof.
(iii) Godfrey Philips India Ltd. v. Girnar Food &
Beverages (P) Ltd, (2004) 5 SCC 257, particularly
paragraph 4 thereof.
7. In response, Mr.S.Diwakar, learned SPC, submitted that
the mark consists of two descriptive words. The first word 'BRITISH'
indicates geographical origin and the second word 'ENGINES'
indicates the nature of goods. Secondly, he submitted that multiple
conflicting marks were cited in the examination report. Therefore, he
concluded that the impugned order does not call for interference.
8. The operative portion of the impugned order is as under:
1. Shri Ravindran applicant/Advocate/Agent
appeared before me and made his submissions. I have heard
arguments, gone through the records and passed the
following Order.
2. The trade mark applied for is objectionable
under Section 9/11 of the Act. The application is
accordingly refused.”
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9. It would be an understatement to say that the impugned
order is completely bereft of reasons. On requesting for grounds of
decision, such grounds of decision were provided. In relevant part,
the grounds of decision are as under:
“* Counsel appeared and req for acceptance,
documents are perused. The mark itself highly descriptive
and also indicates the intended purpose of the goods and
services which are sought for registration. There is no use of
the mark in India prior to the filing of the application. In
view of the grounds, the mark is refused U/s 9 of this act.
*9 – Absolute grounds for refusal of registration.
*9(1)(a) – The trade mark is devoid of any distinctive
character, that is to say, not capable of Distinguishing the
goods or services of one person from those of another person:
*9(1)(b) – The Trade Mark consist exclusively of marks or
indications which serve in trade to designate the kind,
quality, quantity, intended purpose, values, geographical
origin or the time of production of the goods or rendering of
the service or other characteristics of the goods and services.”
10. Apart from recording conclusions that the mark is highly
descriptive and that it indicates the intended purpose of the goods
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and services, no effort has been made to deal with the explanation
provided by the appellant, in reply dated 21.04.2016, either with
regard to the objections under Sections 9 or 11. Solely on the ground
of lack of reasons, the impugned order, including the grounds of
decision, is unsustainable.
11. The appellant has stated categorically in paragraph
4.1.11 of the appeal that the mark is not applied to engines. It is
evident from the application that the mark is derived from the
corporate name of the appellant. There is evidence that multiple
registrations were obtained overseas for the identical mark.
12. By taking into account the aforesaid factors, this is an
appropriate case to proceed to advertisement albeit subject to the
limitation that the appellant shall not claim exclusive rights over the
words “British” or “Engines”, when used separately.
13. For reasons set out above, (T)CMA(TM)/142/2023 is
allowed without any order as to costs by setting aside the impugned
order. Consequently, the application shall proceed to advertisement
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subject to the limitation that the appellant shall not claim exclusive
right to use, separately, either the word “British” or the word
“Engines”. It is made clear that this order will not be binding on
opponents, if any.
28.08.2023
Index : Yes/No
Internet : Yes/No
Neutral Citation: Yes/No
https://www.mhc.tn.gov.in/judis
SENTHILKUMAR RAMAMOORTHY, J
kal
(T)CMA(TM)/142/2023
(OA/19/2019/TM/CHN)
28.08.2023
https://www.mhc.tn.gov.in/judis
