Madras High Court
M/S.Chu Chu Tv Studios Llp vs The Registrar Of Trademarks on 15 September, 2023
1
IN THE HIGH COURT OF JUDICATURE AT MADRAS
DATED: 15.09.2023
CORAM:
THE HON'BLE MR. JUSTICE SENTHILKUMAR RAMAMOORTHY
CMA(TM) No. 2 of 2023
&
CMP. No. 15970 of 2023
M/S.CHU CHU TV STUDIOS LLP
TVH Beliciaa Towers, Tower 1,
1st Floor, No.94,
MRC Nagar, Chennai 600 028. ... Appellant
Vs.
THE REGISTRAR OF TRADEMARKS
The Trademarks Registry, IP Building,
GST Road, Guindy,
Chennai 600 032 ... Respondent
PRAYER : This Civil Miscellaneous Appeal filed under Section 104
and Order XLIII Rule 1 of CPC read with Section 91 of the
Trademark Act, 1999, prays to set aside the order dated 14.09.2021,
passed by the Respondent herein, refusing the application for
registration of the trademark under No.4377556 in Class 28 and
consequently proceed with the application in the manner known
to law.
https://www.mhc.tn.gov.in/judis
1/11
2
For Appellant : Mr.S.Diwakar
for M/s.Rajesh Ramanthan
For Respondent : Mr.K.Subbu Ranga Bharathi,
Central Govt. Standing Counsel
JUDGMENT
The appellant challenges an order dated 14.09.2021 by
which Application No.4377556 for registration of the following
device mark was rejected:
2. The appellant submitted that the above mentioned
application was made on 13.12.2019 by asserting use from
27.09.2019. The application was in class 28 in relation to games,
sporting articles and the like. By examination report dated
08.01.2020, the Registrar of Trade Marks raised objections under
Section 11(1) of the Trade Marks Act, 1999 (the Trade Marks Act)
by citing one mark. The status of the cited mark is shown as
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'objected' in the search report annexed to the examination report.
By reply dated 01.02.2020, the appellant referred to registrations
obtained previously in classes 38 and 41 for the mark CHUCHU
TV and its formative marks. The appellant stated that the cited
mark was adopted subsequent to adoption by the appellant and
that this is evident from the fact that the application was filed in
September 2019 on a 'proposed to be used' basis. In support of the
application, the appellant had also filed evidence of use, including
in the form of online material and invoices. By order dated
14.09.2021, the application was rejected on multiple grounds. The
present appeal is filed in these facts and circumstances.
3. Learned counsel for the appellant invited my attention
to the application for registration of the device mark. He also
pointed out that the appellant had obtained registrations for the
device mark CHU CHU TV both in classes 38 and 41 with effect
from 01.07.2013. He also referred to an article published in the
online version of the Business Standard with regard to the
operations of CHU CHU TV as an online channel for pre-school
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kids. By inviting my attention to invoices issued on 24.08.2019 and
30.08.2019, he pointed out that these invoices relate to goods in
class 28 in respect of which the present application was filed. In
spite of providing such evidence to the Registrar of Trade Marks,
learned counsel contended that the impugned order was issued on
entirely untenable grounds. With reference to the conclusion in the
impugned order that a certificate under Section 65B of the Indian
Evidence Act, 1872 (the Evidence Act) should have been
submitted, learned counsel contended that such certificate is not
required in relation to content posted online by a third party. He
also placed reliance on the judgment of the Delhi High Court in
Excitel Private Limited v. The Registrar of Trade Marks,
2022:DHC:2681, where, at paragraph 14, the Court concluded that
evidence provided by an applicant for registration of the Trade
Mark should not be rejected by citing Section 65B and that, at best,
the examiner may call for an affidavit under Section 65B.
4. With regard to the conclusion in the order that mere
combination of two known words would not qualify as an
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invented word, learned counsel submitted that such conclusion
was reached by relying on Section 9 of the Trade Marks Act, which
was not referred to in the examination report. Even otherwise,
learned counsel submitted that the said conclusion cannot be
countenanced in relation to the device mark.
5. In response to these contentions, Mr.K.Subbu Ranga
Bharathi, learned Central Government Standing Counsel,
submitted that the application was rejected on account of the
existence of one prior application in class 28 and also because a
certificate under Section 65B was not provided.
6. The operative part of the impugned order is set out
below:
“Attorney Reshma submitted that the subject
mark i.e. CHUCHU TV is not descriptive it is
distinctive applied mark is a label mark which is coined
and invented conflicting mark cited in the examination
report is visually and phonetically different and have
different nature of goods Ld. Attorney further submitted
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that principal of entirety of trademark must be
considered Heard examine the application documents
and reply to examination report Reply not satisfactory
neither user documents filed to substantiate the user
claimed continuously and extensively in the application
since 2019 that the subject mark has been in the market
nor disclose in the user affidavit the turnover under the
subject mark nor the advertisement and promotional
expenditure nor share value of the mark yearwise,
territory of the use of mark in order to acquire
distinctiveness moreover visually phonetically
conceptually (i.e. Similarity in ideas) identical and
deceptively similar marks are on record with same
goods, trade channel and consumers are also same vide
application no.4281624 i.e. CHU CHU which is valid
and subsisting Conflicting mark is prior user than
applicant there is likelihood to deceive or cause
confusion regarding the origin of goods which includes
the likelihood of association with the earlier trade mark
in the mind of public Furthermore this is settled law
that mere combination of two known words or
abbreviation thereof, would not be an invented word
even though the combination may not have been in use
before if to the eye or ear the same idea would be
conveyed as by the word in its ordinary form
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Furthermore Supreme Court in the case of Anwar PV v
PK Basheer and Others held conclusively that
documentary evidence in the form of an electronic
record can be proved only in accordance with the
procedure set out under Section 65B of the Evidence act
hence objection maintained application refused under
section 11(1) of the Trade Marks Acts 1999.”
7. From the impugned order, it appears that the Registrar
of Trade Marks rejected the application on the following grounds:
(i) the applicant/appellant did not disclose the turnover
from use of the relevant mark, the advertisement and promotional
expenditure, the share value of the mark, etc.
(ii) a conflicting mark under Application No.4281624 is
valid and subsisting and the user of such conflicting mark is the
prior user.
(iii) a mere combination of two known words or an
abbreviation thereof would not qualify as an invented word.
(iv) electronic record should be proved by filing a
certificate under Section 65B of the Evidence Act.
Each of these grounds warrant a brief discussion.
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8. The appellant had produced invoices and materials
available online in the public domain as evidence of use of the
mark. In addition, the appellant had produced registration
certificates in respect of the mark 'CHUCHU TV' in other classes.
In view of the availability of such evidence, the rejection of the
application on the ground that the turnover and advertising
expenditure was not provided cannot be countenanced.
9. As regards the cited mark, the search report annexed to
the examination report indicates that the status of the mark was
'objected'. Therefore, the conclusion that the mark is valid and
subsisting and that the use of the said mark preceded use by the
appellant is untenable. In this regard, it is pertinent to point out
that Application No.4281624 does not disclose the date of use and
appears to be on a 'proposed to be used' basis. In fact, learned
counsel for the appellant points out that the status of the said mark
continues to be the same and that objection was raised under
Section 9 in respect thereof.
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10. The conclusion that two known words or an
abbreviation thereof would not qualify as an invented word is
correct but entirely inapplicable to the device mark for which the
registration has been applied for. As regards the conclusion that
evidence cannot be accepted in the absence of a certificate under
Section 65B of the Evidence Act, such certificate is required to be
produced when an electronic record, which is within the
possession, control or custody of the person producing such
electronic record, is sought to be introduced as evidence. In the
case at hand, the documents placed on record by the appellant are
articles available online and posted by third parties/news
agencies. Since the appellant is not the person within whose
power, possession or control the said material is, the appellant is
not in a position to and cannot produce a Section 65B certificate in
respect thereof. Besides, as concluded by the Delhi High Court, it
is always possible for the authority to access and examine the said
content and, thereby, verify its genuineness. Therefore, the
impugned order is unsustainable.
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11. For reasons set out above, CMA(TM) No..2 of 2023 is
allowed and the impugned order is, hereby, set aside. By taking
into account the previous registrations obtained by the appellant
for the mark “CHU CHU TV”, the evidence of use in the form of
invoices and online content, the application is directed to be
accepted for advertisement. This order will not, however, be
binding on opponents, if any. There shall be no order as to costs.
Consequently, connected miscellaneous petition is closed.
15.09.2023
Index : Yes/No
Internet : Yes/No
Neutral Citation : Yes/No
kal
https://www.mhc.tn.gov.in/judis
SENTHILKUMAR RAMAMOORTHY, J.
kal
CMA(TM) No. 2 of 2023
&
CMP. No. 15970 of 2023
15.09.2023
https://www.mhc.tn.gov.in/judis
