Madras High Court
(Oa/11/2020/Tm/Chn) vs Assistant Registrar Of Trade ... on 5 October, 2023
2023:MHC:4538
1
IN THE HIGH COURT OF JUDICATURE AT MADRAS
DATED: 05.10.2023
CORAM:
THE HON'BLE MR. JUSTICE SENTHILKUMAR RAMAMOORTHY
(T)CMA(TM) No. 83 of 2023
(OA/11/2020/TM/CHN)
M/s.VRV Foods
Represented by its Partner Mamidipally Vani,
#12-13-853/21, Street No.1, Taranaka,
Secunderabad-500 017, Telangana, India. ... Appellant
Vs.
Assistant Registrar of Trade Marks,
Intellectual Property Office,
Intellectual Property Office Building,
G.S.T.Road,
Guindy, Chennai-600 032,
Tamil Nadu, India. ... Respondent
PRAYER : This Civil Miscellaneous Appeal filed under Section 91
of the Trade Marks Act, 1999 in respect of Goods or Services
falling in one class prays that (a) the order of the Assistant
Registrar of Trade Marks be dismissed and the subject Trade Mark
be allowed to proceed to registration and (b) any other further
order that this Court may deem fit and proper in the facts and
circumstances of the case be passed.
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1/9
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For Appellant : Mr.B.Karthik
For Respondent : Mr.A.R.Sakthivel, SPC
JUDGMENT
The appellant assails an order dated 25.03.2019 by which
Application No.2805581 for registration of the following device
mark was refused:
2. The appellant filed the application for registration of
the mark extracted above on 08.09.2014. Such application was
made by asserting use from 04.08.2014. The application was in
class 35 in respect of 'retail outlets, trading, distribution and the
like. By examination report dated 18.12.2015, the Registrar of
Trade Marks raised objections both under Sections 9 and 11 of the
Trade Marks Act, 1999 (the Trade Marks Act). In response thereto,
by reply dated 19.01.2016, the appellant asserted that the device
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mark is distinctive and capable of distinguishing the services of
the appellant from those of others. Each of the cited marks was
also dealt with in the reply by asserting that the appellant's trade
mark is distinguishable from the cited marks. After a hearing on
25.03.2019, the impugned order dated 25.03.2019 was issued. The
grounds of decision were provided on 29.04.2019.
3. Learned counsel for the appellant invited my attention
to the device mark of the appellant and pointed out that it consists
of three elements, namely, the words 'Kitchen Made'; the stylized
alphabet 'Q” with a mortar and pestle placed inside; and the
words 'Tradition', 'Taste' and 'Trust' written beneath the words
'Kitchen Made'. When viewed as a whole, learned counsel
contended that the mark is distinctive and that the objections
under Section 9 of the Trade Marks Act are untenable. With regard
to the objections under Section 11, learned counsel contended that
the first cited mark is a device mark which contains the words
'Kitchen Centre' along with a device. Therefore, he submits that
this mark is distinguishable from the appellant's mark. As regards
the second cited mark, learned counsel submits that the
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registration was not renewed and that the mark is no longer in
force. As regards the third and fourth cited marks, he submits that
the application for registration was refused.
4. Learned counsel further submits that the impugned
order is bereft of reasoning and that the grounds of refusal merely
record conclusions that the cited marks are identical and are
applied in relation to similar goods/services. Therefore, he
concluded his submissions by stating that the impugned order is
liable to be set aside.
5. In response, Mr.A.R.Sakthivel, learned SPC, submitted
that the appellant's mark consists of two dominant features.
According to Mr.Sakthivel, neither of these dominant features are
distinctive. By way of illustration, he submits that the device of a
mortar and pestle is commonly used in relation to food products.
He further submits that the anti-dissection rule does not impose an
embargo on the examination of the dominant or prominent
features of the mark. In support of this contention, learned counsel
referred to and relied upon the judgment of the Division Bench of
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the Delhi High Court in M/s. South India Beverages Pvt. Ltd. vs
General Mills Marketing Inc. & Another, CDJ 2014 DHC 2287,
particularly paragraphs 20 and 21 thereof.
6. Thus, learned counsel submits that none of the three
elements of the appellant's mark, including the two dominant or
prominent features, are distinctive. Consequently, he submits that
the rejection by reference to Section 9 of the Trade Marks Act is
fully justified. He further submits that the appellant did not
provide any evidence of use in proceedings before the Registrar of
Trade Marks. Consequently, he submits that such evidence should
not be considered at this juncture.
7. On examining the appellant's mark, it is evident that it
is a device mark comprising three elements. A stylized alphabet,
which was referred to as the letter 'Q' by the appellant with a
mortar and pestle placed within such alphabet. Beside the said
device are the words 'Kitchen Made'. Beneath the words 'Kitchen
Made' are the words 'Tradition', 'Taste' and 'Trust'. For purposes of
deciding whether a mark is devoid of distinctive character, the
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mark is required to be examined as a whole. Such exercise cannot
be carried out in vacuum and should be carried out with reference
to the goods or services in relation to which the mark is used. In
relation to the services under class 35, it cannot be said that the
device mark of the appellant is descriptive of the kind, quality or
characteristics of the service.
8. Learned counsel for the respondent contended that the
prominent features of the mark are not distinctive by relying on
the judgment of the Division Bench of the Delhi High Court. The
principle laid down by the Delhi High Court is that the anti-
dissection rule and the identification of the dominant mark are not
antithetical to one another. There can be no quarrel with this
proposition. For purposes of determining as to whether there is
likelihood of confusion among the public, it is certainly
permissible to look at the prominent features of the mark. At this
juncture, the examination is limited to whether the mark as a
whole is distinctive for purposes of Section 9 and whether there is
likelihood of confusion with specific reference to the cited marks.
By taking into account the device mark as a whole, I am of the
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view that it fulfils the requirements of Section 9.
9. As regards the objections under Section 11, except the
first cited mark in the search report annexed to the examination
report, none of the other marks have found place on the Register
of Trade Marks. The first cited mark is a device mark which
consists of at least two elements. The said mark carries the words
'KITCHEN CENTRE'. On comparison, the said mark is
distinguishable from the appellant's mark.
10. As is typical of orders of the Registrar of Trade Marks,
the impugned order contains no reasons. The grounds of decision
also do not contain reasons and merely record the conclusion that
similar marks are on record with regard to identical and similar
goods/services.
11. For reasons set out above, these conclusions are
unsustainable and the impugned order is set aside. By taking into
account the nature of the device mark and the marks cited in
response thereto, the application shall be accepted for
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advertisement. Such acceptance shall, by way of abundant caution,
be subject to the limitation that the appellant shall not claim
exclusive rights over the words 'Kitchen Made', 'Tradition', 'Taste'
or 'Trust', when used separately. It is needless to say that this
order will not be binding on opponents, if any. There shall be no
order as to costs.
05.10.2023
Index : Yes/No
Internet : Yes/No
Neutral Citation : Yes/No
kal
SENTHILKUMAR RAMAMOORTHY, J.
kal
https://www.mhc.tn.gov.in/judis
(T)CMA(TM) No. 83 of 2023
(OA/11/2020/TM/CHN)
05.10.2023
https://www.mhc.tn.gov.in/judis
