Frenway Products Inc vs The Assistant Registrar Of ...
2023 Latest Caselaw 11538 Mad

                                  IN THE HIGH COURT OF JUDICATURE AT MADRAS

                                               DATED: 30.08.2023

                                                   CORAM

                        THE HONOURABLE MR.JUSTICE SENTHILKUMAR RAMAMOORTHY

                                              (T)CMA(TM)/150/2023
                                               (OA/29/2019/TM/CH)


                     Frenway Products Inc.,
                     6F-6, No.130, Sec-2,
                     Chung Hsiao R.Rd,
                     Taipei City,
                     Taiwan - 10053.                                       ... Appellant
                                                     -vs-

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



                     PRAYER: Transfer Civil Miscellaneous Appeal (Trademarks) filed

                     under Section 91 of the Trademarks Act, 1999, prays that the

                     impugned order dated 12.02.2018 in Trademark Application

                     No.2453461 refusing the application may be quashed and set aside.



                     1/7


https://www.mhc.tn.gov.in/judis
                                       For Appellant     : Mr.John Mathew
                                                           for M/s.John Mathew and Associates

                                       For Respondent : Mr.P.G.Santhosh Kumar, SPC

                                                         **********

                                                       JUDGMENT

The appellant applied for registration of the following device

mark

under Application No.2453461 in class 8 in relation to handtools. At

the time of application, the appellant had not used the mark in

relation to handtools in India, but had used the mark outside India.

In response to the application, the respondent provided the

examination report dated 08.01.2014 raising objections both under

Sections 9 and 11 of the Trade Marks Act, 1999 (the Trade Marks

Act). The objection under Section 9 was on the ground that the mark

lacks distinctive character. The objection under Section 11 was made

by citing the mark

https://www.mhc.tn.gov.in/judis which was registered in the name of Emjas Trust under Application

No.1631517 in class 8. In response to the examination report, by

communication dated 23.12.2013, the appellant asserted that the

mark is distinctive.

2. After hearing, the impugned order dated 12.02.2018 was

issued and, upon request, the grounds of decision were provided on

12.11.2018. The present appeal is filed in the said facts and

circumstances.

3. Learned counsel for the appellant invited my attention to the

application, the examination report, the reply thereto and the

impugned order. With reference to the mark cited in the examination

report, learned counsel submitted that the mark was last renewed up

to 17.12.2017. The status of registration of the first cited mark was

specifically placed for consideration.

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

4. Learned counsel also invited my attention to the registration

of identical device marks by the appellant in classes 11 and 7. He

also pointed out that identical device marks were registered in

multiple jurisdictions outside India, such as Canada, Taiwan, China,

Japan, UAE and the United States of America.

5. Mr.P.G.Santhosh Kumar, learned SPC, submits that the

impugned order was issued in view of the existence of a conflicting

mark on the register. He also pointed out that such conflicting mark

is also in class 8 and in relation to similar goods.

6. The objection under Section 9 is clearly untenable because

the device mark of the appellant is neither generic nor descriptive of

the goods in relation to which it is proposed to be applied. The

appellant has placed on record evidence that the last registration of

the mark cited in the examination report was not renewed after

17.12.2017. There are registrations of the identical device mark by the

https://www.mhc.tn.gov.in/judis appellant in other classes in India and in multiple jurisdictions

overseas.

7. The operative part of the impugned order is as under:

1. Shri MANIKANDAN 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."

8. Neither the impugned order nor the grounds of decision

contain any reasons in support of the conclusions recorded therein.

Therefore, the impugned order and the grounds of decision are

unsustainable and are, hereby, set aside. By taking into

https://www.mhc.tn.gov.in/judis consideration the factors set out in paragraph 6, this is a fit case to

proceed to advertisement. It is, however, made clear that this

decision would not be binding on opponents, if any. There shall be

no order as to costs.

                                                                                 30.08.2023
                     Index           : Yes / No
                     Internet        : Yes / No
                     Neutral Citation: Yes/ No

                     rna




                                                  SENTHILKUMAR RAMAMOORTHY,J





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




                                  (T)CMA(TM)/150/2023
                                   (OA/29/2019/TM/CH)




                                            30.08.2023







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