Dated: 29.11.2023 vs The Registrar Of Trade Marks
2023 Latest Caselaw 15213 Mad

Madras High Court

Dated: 29.11.2023 vs The Registrar Of Trade Marks on 29 November, 2023

Author: Senthilkumar Ramamoorthy

Bench: Senthilkumar Ramamoorthy

    2023:MHC:5230




                                  IN THE HIGH COURT OF JUDICATURE AT MADRAS

                                               DATED: 29.11.2023

                                                     CORAM

                        THE HONOURABLE MR.JUSTICE SENTHILKUMAR RAMAMOORTHY

                                              (T)CMA(TM)/208/2023
                                            (OA/SR.102/2020/TM/CHN)


                     M/s.K and K Promotions SA
                     (K and K Promotions Ltd.,)
                     Rue De Veyrot 10, 1217, Meyrin,
                     Switzerland.                                          ... Appellant
                                                       -vs-

                     The Registrar of Trade Marks,
                     Trade Marks Registry,
                     Chennai.                                            ... Respondent


                     PRAYER: Transfer Civil Miscellaneous Appeal (Trade Marks) filed

                     under Section 91 of the Trade Marks Act, 1999, praying to set aside

                     the order dated 20th March 2020 of the Respondent in respect of

                     Trade Mark Application No.4239877 for the mark CHATEAU

                     MONESTIER LA TOUR in class 33.




                     1/6


https://www.mhc.tn.gov.in/judis
                                       For Appellant      : Mr.R.Rajesh
                                                            for M/s.De Penning and De Penning

                                       For Respondent     : Mr.A.R.Sakthivel, SPC

                                                          **********



                                                        JUDGMENT

The appellant challenges the statement of grounds of decision

dated 20.03.2020 issued pursuant to order dated 05.03.2020 rejecting

Application No.4239877 for registration of the word mark

"CHATEAU MONESTIER LA TOUR" in Class 33.

2. The above mentioned application was filed on 19.07.2019 on

a "proposed to be used" basis. By examination report dated

21.08.2019, the Registrar of Trade Marks raised objections under

Section 11(1) of the Trade Marks Act, 1999 (the Trade Marks Act) by

citing three marks. The appellant responded thereto by stating that

https://www.mhc.tn.gov.in/judis the only commonality between the mark applied for and the cited

marks is the word "CHATEAU". The appellant further submitted

that the mark should be viewed and compared in entirety and, if this

is done, the mark applied for qualifies as distinctive and capable of

distinguishing the goods of the appellant from those of others. After

a hearing on 05.03.2020, the application was rejected. The present

appeal arises in the said facts and circumstances.

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

application and pointed out that the word mark is distinctive when

viewed as a whole. By referring to pages 42 to 52 of the typed set of

papers, learned counsel submitted that the World Intellectual

Property Organization (WIPO) issued a statement of grant of

protection in respect of the relevant mark. Learned counsel also

pointed out that there are a large number of marks registered by the

respondent that contain the word "CHATEAU" as one element of the

mark.

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

4. In response to these contentions, Mr.A.R.Sakthivel, learned

SPC, submits that the mark is required to be looked at as a whole and

that the element "CHATEAU" cannot be overlooked while carrying

out this exercise. He further submits that the Registrar of Trade

Marks is obligated to consider the likelihood of confusion and that

such likelihood exists in view of the common element.

5. The French word "CHATEAU" means, in substance, a large

country house or castle. Since wines are produced by particular

estates, judicial notice may be taken of the fact that the element

CHATEAU is commonly contained in the marks associated with the

wine business. This is corroborated by the search report placed on

record by the appellant showing a large number of registered marks

containing the word "CHATEAU" as an element. There can be no

demur to the general proposition advanced by learned SPC to the

effect that the Registrar is under an obligation to examine if there is

any likelihood of confusion. Such likelihood of confusion should,

https://www.mhc.tn.gov.in/judis however, be examined by reckoning the class of consumers

consuming the relevant goods. In the context of wines, the class of

consumers is limited, likely to be discerning and aware of the usage

of the element "CHATEAU" in most wine related marks.

6. Therefore, the rejection of the application is untenable and

the order of refusal and the statement of grounds are, hereby, set

aside. By taking into account the fact that the appellant's mark has

been granted a statement of protection by the WIPO, and by

comparing the appellant's mark and the cited marks as a whole, the

application shall proceed to advertisement. It is made clear,

however, that this order will not be binding on opponents, if any.

(T)CMA(TM)/208/2023 is allowed on the above terms without any

order as to costs.

29.11.2023 rna Index : Yes / No Internet : Yes / No Neutral Citation: Yes / No

https://www.mhc.tn.gov.in/judis SENTHILKUMAR RAMAMOORTHY,J

rna

(T)CMA(TM)/208/2023 (OA/SR.102/2020/TM/CHN)

29.11.2023

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