Madras High Court
Continental Reifen Deutschland ... vs The Assistant Registrar Of Trade ... on 29 August, 2023
IN THE HIGH COURT OF JUDICATURE AT MADRAS
DATED: 29.08.2023
CORAM
THE HONOURABLE MR.JUSTICE SENTHILKUMAR RAMAMOORTHY
C.M.A(TM)/1/2023
Continental Reifen Deutschland GmbH
Vahrenwalder Strasse 9, D-30165 Hannover, Germany
Represented by its Power of Attorney Raghavan Ravindran Nair,
F-5, Aswamedha Apartments,
119 Velacherry Main Road, Guindy,
Chennai - 600 032.
... Appellant
-vs-
The Assistant Registrar of Trade Marks,
Intellectual Property Rights Building,
GST Road, Guindy, Chennai - 600 032. ... Respondent
PRAYER: Civil Miscellaneous Appeal (Trademarks) filed under
Section 91 of the Trade Marks Act, 1999, to set aside the order dated
15.02.2021 in TLA/144 dated 24.02.2021 in the matter of Application
No.2254034 in Class - 12 and in the matter of Form TM-15 dated
05.04.2017 on the file of Assistant Registrar of Trademarks, Chennai.
1/8
https://www.mhc.tn.gov.in/judis
For Appellant : Mr.R.Rajesh
For Respondent : Mr.C.Samivel, SPC
**********
JUDGMENT
The appellant assails an order dated 15.02.2017 by which the
grounds of decision for order dated 08.03.2017 were provided and
the application for registration of the mark
was rejected. The appellant is a company incorporated in Germany.
The appellant had applied for the registration of the mark
reproduced above in class 12 in relation to vehicle tyres and tubes.
The application was filed on 21.12.2011 on a 'proposed to be used'
basis. An examination report dated 27.11.2012 was provided to the
appellant. In such report, the Registrar of Trade Marks raised
objections under Section 11 of the Trade Marks Act, 1999 (the Trade
Marks Act). Such objection was made by citing three marks. In
response thereto, by communication dated 21.02.2014, the appellant
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distinguished its mark from the three cited marks. After a hearing,
the order dated 08.03.2017 was issued. On request, the grounds of
decision were provided on 15.02.2021. The present appeal is filed in
the above facts and circumstances.
2. Learned counsel for the appellant invited my attention to the
application, the examination report, the reply thereto, and the
impugned order. With specific reference to the examination report,
learned counsel submitted that the first cited mark therein
is clearly distinguishable from the appellant's mark. In particular, he
submitted that the word GRANDPRIX is written as one word in the
appellant's mark, whereas it is written as two words in the first cited
mark along with the word EUROPE and that the alpha numeral M3
is the prominent feature of the mark. He further submitted that the
registration in relation to the said mark was last renewed up to
21.12.2018. As regards the second and third cited marks, he
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submitted that the said marks consist of the word GRAND or
GRANDE and are clearly distinguishable.
3. His next contention was that the examination report contains
objections only under Section 11, whereas the impugned order also
refers to Section 9. By pointing out that the grounds of decision were
provided almost four years after the impugned order was issued,
learned counsel submitted that neither the impugned order nor the
grounds of decision are sustainable.
4. As is the case with most decisions of the Registrar of Trade
Marks, the order dated 08.03.2017 contains no reason. The operative
portion thereof is set out below:
"1. Shri NIYATI applicant / Advocate /
Agent appeared before me and made his
submissions. I have heard arguments, gone
through the records and passed the following
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order.
2. The trade mark applied for is
objectionable under Section 9/11 of the Act. The
application is accordingly refused."
5. On comparing the order with the examination report, it is
evident that no objection was raised under Section 9 of the Trade
Marks Act in the examination report, whereas Section 9 is referred to
in the order. Both on the ground that no reasons were set out in the
impugned order and on the ground that an objection not previously
raised is referred to therein, the order, including the grounds of
decision, is unsustainable.
6. Since submissions were made with regard to Section 9 of the
Trade Marks Act, the same are briefly dealt with. The mark consists
of the fused word "GRANDPRIX". The said word means grand prize
in French and cannot be characterized as either generic or descriptive
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when viewed in the context of the goods in relation to which the
mark is applied. At most, it may be considered as suggestive.
Therefore, the objections under Section 9 are untenable. As regards
objections under Section 11, the first cited mark is closest to the mark
of the appellant. As correctly pointed out by learned counsel for the
appellant, when viewed as a whole, there are sufficient
distinguishing features. Moreover, since the last registration was
valid only up to 21.12.2018, the registration has lapsed. The second
and third cited marks are completely distinguishable from the
appellant's mark. In these facts and circumstances, I am inclined to
direct that the application shall proceed to advertisement.
7. For reasons set out above, the order dated 08.03.2017 and the
grounds of decision are set aside and the application shall proceed to
advertisement. This is, however, subject to the limitation that the
appellant shall not claim exclusive right to use the word GRAND or
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PRIX when used separately. It is also made clear that this decision
would not be binding on opponents, if any. There shall be no order
as to costs.
29.08.2023
Index : Yes / No
Internet : Yes / No
Neutral Citation: Yes/ No
rna
https://www.mhc.tn.gov.in/judis
SENTHILKUMAR RAMAMOORTHY,J
rna
C.M.A(TM)/1/2023
29.08.2023
https://www.mhc.tn.gov.in/judis
