Madras High Court
Sundaram Industries Limited vs The Registrar Of Trade Marks on 5 September, 2023
IN THE HIGH COURT OF JUDICATURE AT MADRAS
DATED: 05.09.2023
CORAM
THE HONOURABLE MR.JUSTICE SENTHILKUMAR RAMAMOORTHY
(T)CMA(TM)/140/2023
(OA/16/2019/TM/CH)
Sundaram Industries Limited,
180, Anna Salai, Chennai 600 006
India. ... Appellant
-vs-
The Registrar of Trade Marks,
Trade Marks Registry,
Chennai. ... Respondent
PRAYER: Transfer Civil Miscellaneous Appeal (Trademarks) filed
under Sections 91 of the Trademarks Act, 1999, prays that the order
dated 05 October 2018 issued by the respondent refusing the mark
TRISTAR vide Application No.2790337 in class 12 be set aside and
the subject mark in the name of SUNDARAM INDUSTRIES
LIMITED be allowed to proceed to registration.
1/9
https://www.mhc.tn.gov.in/judis
For Appellant : Mr.R.Rajesh
for M/s. De Penning and De Penning
For Respondent : Mr.S.Diwakar, SPC
**********
JUDGMENT
The appellant assails the grounds of decision dated 05.10.2018
in support of order dated 20.07.2018 by which its application for
registration of the word mark TRISTAR was refused. The appellant
applied for registration of the above mentioned mark under
Application No.2790337 dated 12.08.2014. Such application was in
class 12 in relation to solid industrial tyres. In the examination report
dated 08.12.2015, the application was objected to both under Sections
9 and 11 of the Trade Marks Act, 1999 (the Trade Marks Act). As
regards the objection under Section 9, the Registrar of Trade Marks
stated that the mark was devoid of distinctive character. As regards
the objection under Section 11, four marks were cited. In response to
the examination report, by communication dated 01.08.2016, the
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appellant stated that the mark does not describe the goods listed in
the application and does not refer to the character or quality thereof.
With regard to the cited marks, the appellant stated that the goods in
relation to which the mark is proposed to be applied are solid
industrial tyres, which are clearly different from the goods in relation
to which the cited marks are applied. After providing a hearing on
12.06.2018, by order dated 20.07.2018, the application was rejected.
Upon application, the grounds of decision were provided on
05.10.2018. The present appeal is filed in the above facts and
circumstances.
2. Learned counsel for the appellant placed for consideration
the application for registration, the examination report, the reply
thereto, and the impugned order. With reference to the examination
report, learned counsel submitted that the objection that the mark is
generic or descriptive of the goods is untenable. As regards the cited
marks, he submitted that the fourth cited mark was subsequently
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abandoned. With regard to the second and third cited marks, he
submitted that the said marks are clearly distinguishable. Turning to
the first cited mark, learned counsel submitted that the said mark
consists of the words TRI and STAR written separately. Moreover,
he submitted that the mark is applied in relation to tyres and tubes
for motor land vehicles. By contrast, he pointed out that the
appellant's mark is used only in relation to solid industrial tyres. By
inviting my attention to Section 11(1) of the Trade Marks Act, he
submitted that there would be no likelihood of confusion on the part
of the public because the consumers of solid industrial tyres and
tyres and tubes for motor land vehicles are different.
3. In response, Mr.S.Diwakar, learned SPC, submitted that the
mark TRISTAR and the first cited mark in the examination report are
identical. He further submitted that the goods are nearly identical.
He placed for consideration the current status of TM No.308929 (i.e.,
the first cited mark) and pointed out that the registration is valid up
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to 01.10.2033. In these circumstances, learned counsel concluded his
submissions by submitting that there is no infirmity in the impugned
order and that no interference is warranted.
4. As is typical with orders of the Registrar of Trade Marks, the
impugned order is cryptic and contains no reasons. While it is stated
in the grounds of decision that deceptively similar marks are already
on record and that the appellant did not show use of the mark in
India prior to filing the application, the grounds of decision also do
not satisfy the requirement that a quasi-judicial authority should
engage with the submissions of the applicant and provide reasons for
rejecting such submissions. Nonetheless, in view of the first cited
mark being used in relation to similar goods and the marks being
near identical, no purpose would be served in interfering with the
impugned order entirely on the ground that it is not supported by
reasons. Therefore, the merits are examined.
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5. On examining the application of the appellant, it is evident
that the application was made on a "proposed to be used” basis. The
application is in respect of the word mark TRISTAR. Learned
counsel for the appellant is correct in contending that the mark is
neither generic or descriptive when used in relation to solid
industrial tyres. This leads to the objection under Section 11. Such
objection was raised by citing four conflicting marks. The first cited
mark relates to TM No.308929, which is in respect of the mark
TRISTAR under class 12; the registration was obtained with effect
from 01.10.1975; and is currently valid up to 01.10.2033. The said
mark is used in relation to tyres and tubes for motor land vehicles. In
my view, solid industrial tyres and tyres and tubes for motor land
vehicles are clearly similar if not identical goods.
6. Section 11(1) of the Trade Marks Act is as under:
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"11. Relative grounds for refusal of
registration. - (1) Save as provided in section 12,
a trade mark shall not be registered if, because of -
(a) its identity with an earlier trade mark
and similarity of goods or services covered by the
trade mark; or
(b) its similarity to an earlier trade mark and
the identity or similarity of the goods or services
covered by the trade mark,
there exists a likelihood of confusion on the part of
the public, which includes the likelihood of
association with the earlier trade mark."
7. From the text of Section 11(1), it is evident that trade mark
protection would apply to cases where the later mark is identical or
deceptively similar to the earlier mark and the goods or services in
question are either identical or similar. An additional requirement is
that such similarity in marks and goods / services should create
likelihood of confusion on the part of the public. By taking into
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account the fact that the marks are near identical and the goods are
similar, I am of the view that there would be likelihood of confusion
on the part of the public or, at a minimum, the likelihood of
association with the earlier mark.
8. For the reasons set out above, (T)CMA(TM)/140/2023 is
dismissed without any order as to costs.
05.09.2023
rna
Index : Yes / No
Internet : Yes / No
https://www.mhc.tn.gov.in/judis
SENTHILKUMAR RAMAMOORTHY,J
rna
(T)CMA(TM)/140/2023
(OA/16/2019/TM/CH)
05.09.2023
https://www.mhc.tn.gov.in/judis
