Madras High Court
Anuj Kumar Gupta vs The Deputy Registrar Of Trade Marks on 21 November, 2023
Author: Senthilkumar Ramamoorthy
Bench: Senthilkumar Ramamoorthy
(T)CMA(TM)/182/2023
IN THE HIGH COURT OF JUDICATURE AT MADRAS
DATED : 21.11.2023
CORAM
THE HONOURABLE MR.JUSTICE SENTHILKUMAR RAMAMOORTHY
(T)CMA(TM)/182/2023
(OA/SR.63/2020/TM/CHN)
Anuj Kumar Gupta, Trading as ATC Tools,
Industrial Estate, 19-2-239/1/A,
Chandulal Baradari, Bahadurpura,
Hyderabad, Telangana 500064, India. ... Appellant
-vs-
The Deputy 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 (Trade Marks) filed
under Section 91 of the Trade Marks Act, 1999, praying that the order
dated 20th February 2020 of the Hon'ble Deputy Registrar of Trade
Marks in Application Number 4082478 in Class 08 be dismissed and
the Subject Trade Mark be allowed to proceed to registration.
1/8
https://www.mhc.tn.gov.in/judis
(T)CMA(TM)/182/2023
For Appellant : Mr.B.Karthik
For Respondent : Mr.M.Karthikeyan, SPC
**********
JUDGMENT
The appellant challenges an order dated 20.02.2020 by which
Application No.4082478 for registration of the following device mark
was rejected:
2. The appellant applied for registration of the device mark
extracted above on 09.02.2019 by asserting use since 17.10.2013 in
relation to hand tools and power tools. By examination report dated
01.03.2019, the Registrar of Trade Marks raised objections under
Section 11 of the Trade Marks Act, 1999 (the Trade Marks Act) by
https://www.mhc.tn.gov.in/judis
(T)CMA(TM)/182/2023
citing two marks. The appellant responded thereto on 16.03.2019 and
stated that the cited marks are distinguishable. After a hearing on
20.02.2020, the application was rejected by the impugned order.
3. Learned counsel for the appellant invited my attention to the
application and pointed out that the application was in respect of a
device mark, which has been used by the appellant since 17.10.2013.
In order to substantiate use of the mark, learned counsel referred to
invoices issued by the appellant from 17.10.2013. With regard to the
marks cited in the examination report, learned counsel submitted
that the first cited mark is also a device mark in use since 30.09.2011.
Apart from the distinctions between the two device marks, learned
counsel contended that the appellant qualifies as an honest and
concurrent user in terms of Section 12 of the Trade Marks Act. He
also submitted that the device mark was adopted in good faith and
that it is derived from the trading name, Anuj Trading Company, of
the appellant.
https://www.mhc.tn.gov.in/judis
(T)CMA(TM)/182/2023
4. Learned counsel referred to the certificate of the Chartered
Accountant with regard to the turnover of the appellant from the
financial year 2012-13 to the financial year 2018-19. He also pointed
out that applications for registration in classes 7 and 35 in respect of
the identical device mark were accepted for advertisement.
5. In response to these contentions, Mr.M.Karthikeyan, learned
SPC, submitted that the application was rejected on account of the
existence of two prior marks on the register, which are visually and
phonetically similar. He also submitted that the use of the
abbreviation “ATC” as a trade mark is rampant in the hand and
power tools industry and that there is likelihood of confusion among
the public as a result thereof.
6. The examination report cites two marks. The second cited
mark is used in relation to hand tools and hand operated implements
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(T)CMA(TM)/182/2023
for spraying insecticide. Therefore, the goods to which the appellant
uses the trade mark and the goods to which the second cited mark is
used do not appear to be similar. Turning to the first cited mark, it is
also a device mark containing the element “ATC”. The mark is
registered and learned counsel for the appellant admits that the mark
is in use since 30.09.2011. The mark is applied in relation to tools
including hand tools and power tools. Given the fact that the goods
are similar and the marks are also similar, the conclusion in the
impugned order that the prior marks are phonetically and visually
similar is not devoid of merit.
7. However, it should be noticed that the trading name of the
appellant is Anuj Trading Company and this is borne out from the
certificate issued by the Commercial Taxes Department, Government
of Andhra Pradesh and by the invoices issued by the appellant. It is
also noticeable from the invoices issued from 25.09.2018 that the
trading name has been changed to ATC Tools. Thus, the adoption of
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(T)CMA(TM)/182/2023
the element “ATC” in the device mark appears to be in good faith.
As stated earlier, evidence of use in the form of invoices is available
from 17.10.2013 to 17.03.2020. The appellant has also placed on
record the fact that applications for registration relating to the
identical device mark were accepted for advertisement in allied
classes.
8. Based on the foregoing evidence, the appellant has made out
an arguable case with regard to the contention that it is an honest and
concurrent user of the device mark. By taking into consideration all
the factors set out above, the impugned order calls for interference.
In this regard, it should be noticed that the impugned order also
refers to the meaning of the cited mark being the same as that of the
mark applied for, and the said conclusion is untenable.
9. Therefore, the impugned order is set aside and Application
No.4082478 shall proceed to advertisement. It is made clear,
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(T)CMA(TM)/182/2023
however, that this order will not be binding on opponents, if any,
including the proprietors of the cited marks. There shall be no order
as to costs.
21.11.2023
rna
Index : Yes / No
Internet : Yes / No
Neutral Citation: Yes/No
https://www.mhc.tn.gov.in/judis
(T)CMA(TM)/182/2023
SENTHILKUMAR RAMAMOORTHY,J
rna
(T)CMA(TM)/182/2023
(OA/SR.63/2020/TM/CHN)
21.11.2023
https://www.mhc.tn.gov.in/judis
