Madras High Court
(Oa/21/2019/Tm/Chn) vs The Registrar Of Trade Marks on 11 September, 2023
2023:MHC:4109
1
IN THE HIGH COURT OF JUDICATURE AT MADRAS
DATED: 11.09.2023
CORAM:
THE HON'BLE MR. JUSTICE SENTHILKUMAR RAMAMOORTHY
(T) CMA (TM) No.144 of 2023
(OA/21/2019/TM/CHN)
M/s. TIL Healthcare Private Limited
Having its office at No.72,
Marshalls Road, Egmore,
Chennai 600008 ... Appellant
Vs.
The Registrar of Trade Marks
Trade Mark Registry, Boudhik Sampada Bhawan,
G.S.T.Road, Guindy,
Chennai 600032 ... Respondent
PRAYER : This Civil Miscellaneous Appeal filed under Section 91
of the Trademark Act, 1999, prays (a) order dated 07.12.2018
passed by the learned Examiner be set aside in Application
No.2479146 pertaining to the mark “URELOG”; (b) this Appeal be
allowed and registration of the Trade Mark URELOG be granted
to the Appellant based on Application No.2479146; (c) the learned
Tribunal may be pleased to direct the Registrar of Trade Marks,
Chennai to revert and/or change the status of the Trade Mark
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1/7
2
“URELOG” bearing Application No.2479146 in Class 5 to its
Original position and (d) costs of these proceedings be awarded to
the Appellant.
For Appellant : Mr.M.S.Bharath
for M/s. Kria Law
For Respondent : Mr.S.Diwakar, SPC
JUDGMENT
The appellant challenges the grounds of decision dated
07.12.2018 issued in relation to order dated 16.02.2018, by which
Application No.2479146 for the registration of the mark
“URELOG” was refused.
2. The appellant applied for registration of the word
mark set out above on 15.02.2013 on a “proposed to be used”
basis. By examination report dated 20.02.2014, the Registrar of
Trademarks raised objections under Section 11 of the Trade Marks
Act, 1999 (the Trade Marks Act) by citing three similar marks.
3. In response, by communication dated 16.03.2016, the
appellant stated that the mark “URELOG” is distinctive and was
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coined honestly by drawing on the element 'URE' which is related
to the kidney and the element “LOG” which is derived from
“KETOANALOGUE”, which is a kidney-related supplement.
After a hearing on 22.01.2018, the refused order was issued. The
impugned grounds of decision were provided subsequently on
07.12.2018. The present appeal was filed in these facts and
circumstances.
4. Learned counsel for the appellant referred to the
application for registration, the examination report, the response
thereto, the impugned order and the grounds of decision. In
addition, learned counsel referred to an affidavit dated 05.09.2023,
and, in particular, to the statement therein that there are 87 marks
with “URE” as the first three alphabets in class 5 and that 32 of
such marks were registered. Likewise, learned counsel pointed out
the statement therein that there are 5735 marks containing the
element “LAC” and that 2675 of those marks were registered. He
also invited my attention to the search report in order to
substantiate the statement.
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5. Learned counsel also relied upon the following
judgments:
1.F.Hoffman La Roche and Company Ltd. v.
The Sanitex Chemical Industries Ltd., 1962 SCC
Online Bom 110, particularly paragraph 14 thereof;
2. Kaviraj Pandit Durga Dutt Sharma v.
Navaratna Pharmaceutical Laboratories, 1964 SCC
OnLine SC 14, particularly paragraph 30 thereof; and
3. Mount Mettur Pharmaceuticals (P) Ltd.
v. Dr.Wander, 1976 SCC OnLine Mad 147,
particularly paragraph 8 thereof.
6. In response to these contentions, Mr.S.Diwakar,
learned SPC, invited my attention to the grounds of decision and
pointed out that the application for registration was rejected
primarily on account of the existence of the mark “URELAC”,
which was registered with effect from 15.09.1993. Mr.Diwakar
further submitted that the marks are applied to nearly identical
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products and that the marks are both phonetically and visually
similar. Therefore, learned counsel concluded his submissions by
submitting that the impugned order does not call for interference.
7. From the materials placed on record by the appellant, it
appears that the element “URE” is derived from the words “urea”
or “urine”. Similarly, the element “LOG” appears to have been
derived from “KETOANALOGUE”, which are broken down
forms of amino acids, from which nitrogen is excluded. It is used
as a supplement to improve renal function.
8. The appellant has also placed for consideration the
number of marks registered with the element “URE” and the
element “LAC”. The reason for adoption of the mark was duly
explained in the response dated 16.03.2016. As compared to an
arbitrary or fanciful mark, ordinarily, the degree of protection
extended to a mark consisting of derived elements such as “URE”
and “LAC” is lower.
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9. By taking into account the explanation with regard to
the reason for adoption of the mark, the existence of multiple
marks containing the element “URE” and the fact that “URELOG”
is not a self evident fusion of urea/urine and ketoanalogue, the
impugned order is liable to be set aside and the application
accepted for advertisement.
10. Accordingly, (T)CMA(TM) No.144 of 2023 is allowed,
the impugned order is, hereby, set aside and the respondent is
directed to accept the application for advertisement. This order
will not, however, be binding on opponents, if any. There shall be
no order as to costs.
11.09.2023
Index : Yes/No
Internet : Yes/No
Neutral Citation : Yes/No
kal
https://www.mhc.tn.gov.in/judis
SENTHILKUMAR RAMAMOORTHY, J.
kal
(T) CMA (TM) No.144 of 2023
(OA/21/2019/TM/CH)
11.09.2023
https://www.mhc.tn.gov.in/judis
