Madras High Court
M/S.Vrv Foods vs Assistant Registrar Of Trade ... on 13 October, 2023
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IN THE HIGH COURT OF JUDICATURE AT MADRAS
DATED: 13.10.2023
CORAM:
THE HON'BLE MR. JUSTICE SENTHILKUMAR RAMAMOORTHY
(T)CMA(TM) No. 184 of 2023
(OA/SR.131/2019/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 Class 29 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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For Appellant : Mr.B.Karthik
For Respondent : Mr.A.R.Sakthivel, SPC
JUDGMENT
The appellant assails an order dated 21.03.2019 by which
Application No.2805582 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 29 in respect of goods, namely, jams, pickles, potato chips,
fruit jellies, 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 12.04.2016, the appellant asserted
that the device mark is distinctive and capable of distinguishing
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the goods 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 20.03.2019, the impugned order dated
21.03.2019 was issued. The grounds of decision were provided on
10.09.2019.
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 and second cited marks contain the words 'Kitchens of
India' which are device and label marks, respectively. The third
cited mark is a word mark 'Home-Made' which is in the
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examination stage. Therefore, he submits that this mark is
distinguishable from the appellant's mark.
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
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deciding whether a mark is devoid of distinctive character, the
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.
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.
9. When the device mark of the appellant is considered
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as a whole, the three elements in combination appear to satisfy the
requirements of Section 9 of the Trade Marks Act.
10. As regards the objections under Section 11, the first
and second cited marks are device and label marks, respectively,
which consist of at least two elements. The said marks carry the
words 'KITCHENS OF INDIA'. On comparison, the said marks are
distinguishable from the appellant's mark. As regards the third
cited mark, it has found no place in the Register of Trade Marks.
11. 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.
12. 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
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response thereto, the application shall be accepted for
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.
13.10.2023
Index : Yes/No
Internet : Yes/No
Neutral Citation : Yes/No
kal
To
Assistant Registrar of Trade Marks,
Intellectual Property Office,
Intellectual Property Office Building,
G.S.T.Road,
Guindy, Chennai-600 032,
Tamil Nadu, India.
https://www.mhc.tn.gov.in/judis
SENTHILKUMAR RAMAMOORTHY, J.
kal
(T)CMA(TM) No. 184 of 2023
(OA/SR.131/2019/TM/CHN)
13.10.2023
https://www.mhc.tn.gov.in/judis
