Madras High Court
Dated : 21.09.2023 vs The Registrar Of Trade Marks on 21 September, 2023
2023:MHC:4335
(T)CMA(TM)/108/2023
IN THE HIGH COURT OF JUDICATURE AT MADRAS
DATED : 21.09.2023
CORAM
THE HONOURABLE MR.JUSTICE SENTHILKUMAR RAMAMOORTHY
(T)CMA(TM)/108/2023
(OA/6/2021/TM/CHN)
The Ryzman Family Partnership,
2220, Gaspar Avenue, Los Angeles,
CA 90040, USA. ... Appellant
-vs-
The Registrar of Trade Marks,
Trade Marks Registry,
Chennai. ... Respondent
PRAYER: Transfer Civil Miscellaneous Appeal (Trade Marks) filed
under Section 91 of the Trade Marks Act, 1999, praying that the
impugned order issued by the Respondent dated 04 December 2020
and received by the Appellant only on 08 December 2020 be set aside
and the mark ''SURGI WAX'' vide application No.3947193 in class 03
in the name of THE RYZMAN FAMILY PARTNERSHIP be allowed
to proceed to registration.
1/8
https://www.mhc.tn.gov.in/judis
(T)CMA(TM)/108/2023
For Appellant : Mr.R.Rajesh
for M/s.De Penning and De Penning
For Respondent : Mr.S.Diwakar, SPC
**********
ORDER
The appellant assails the grounds of decision dated 04.12.2020
in support of the order dated 23.09.2019 by which Application
No.3947193 for registration of the mark "SURGI WAX" was refused.
The appellant applied for registration of the above mentioned word
mark on 17.09.2018 in Class 3 on a "proposed to be used" basis. The
mark was proposed to be applied in relation to non-medicated skin
care preparations, such as moisturizing lotions, cleaning lotions, etc.
By examination report dated 22.10.2018, the Registrar of Trade Marks
raised objections under Section 11(1) of the Trade Marks Act, 1999
(the Trade Marks Act) by citing the mark SURGI - STAIN. The said
mark was registered in relation to a product used for removal of
stains from stainless steel surgical instruments in class 3. By reply
dated 20.12.2018, the appellant stated that the appellant's mark and
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(T)CMA(TM)/108/2023
the cited mark should be compared as a whole and not by splitting
such marks into the respective constituents. The appellant further
stated that the goods to which the appellant's mark is applied and the
goods to which the cited mark is applied are dissimilar. After a
hearing on 23.07.2019, by order dated 23.09.2019, the application was
rejected by citing both Section 9 and Section 11(1)(a) of the Trade
Marks Act. The grounds of decision were issued on 04.12.2020. The
present appeal was filed in the said facts and circumstances.
2. By inviting my attention to the appellant's mark, learned
counsel for the appellant submitted that the mark was proposed to be
applied in relation to skin care preparations. By contrast, he pointed
out that the cited mark SURGI - STAIN is applied to a product used
for the removal of stains from stainless steel surgical instruments.
Therefore, he submitted that the goods of the appellant and the
goods of the proprietor of the cited mark are completely different.
Learned counsel pointed out that these aspects were dealt with in the
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(T)CMA(TM)/108/2023
reply dated 20.12.2018. By turning to the impugned order, learned
counsel pointed out that the said order refers to the absolute grounds
of refusal under Section 9 of the Trade Marks Act although such
grounds were not raised in the examination report. By drawing
reference to the grounds of decision, he pointed out that the grounds
of decision referred to Section 11(1)(b) of the Trade Marks Act,
whereas the order dated 23.09.2019 referred to Section 11(1)(a) of the
Trade Marks Act. For all these reasons, learned counsel submitted
that the impugned order is unsustainable.
3. In response, Mr.S.Diwakar, learned SPC, contended that the
appellant's mark SURGI WAX is clearly descriptive of the intended
purpose and kind of goods to which the mark was proposed to be
applied. In addition, he submitted that the marks SURGI WAX and
SURGI-STAIN are deceptively similar and such marks are applied to
the same class of goods (class 3). Hence, he submitted that no
interference is warranted with the impugned order.
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(T)CMA(TM)/108/2023
4. The application reveals that the mark SURGI WAX was
proposed to be used in relation to skin care preparations. By
contrast, the registered trade mark SURGI - STAIN is used in relation
to a rust and stain remover from stainless steel surgical instruments.
Section 11(1) of the Trade Marks Act becomes applicable when the
mark for which an application is filed is identical or similar to an
earlier trade mark and the goods or services concerned are either
identical or similar. In this case, there is some similarity between the
marks but the goods are certainly not identical. The question as to
whether the goods are similar or not cannot be decided merely by
reference to the class in which the application is filed. Put
differently, goods falling within the same class may be different
whereas goods falling in different classes may be similar. The
determination as to whether goods are similar or dissimilar is
required to be made by taking into account multiple factors such as
whether the goods concerned can be used as substitutes, and
whether the goods concerned are directly complementary. The
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(T)CMA(TM)/108/2023
origin of the goods and the intended purpose also play a role.
Reference may be made to the judgment in Hatsun Agro Products
Limited -vs- Arokiya Foods, MANU/TN/6029/2022, where I discussed
the law on the subject extensively.
5. As discussed earlier, the cited registered mark is applied in
relation to a rust and stain remover for use in relation to stainless
steel surgical instruments. By taking into consideration the range of
factors discussed in the preceding paragraph, it appears that the
goods are not similar goods. If the goods are not similar, Section
11(1) of the Trade Marks Act is inapplicable. Consequently, unless
the registered proprietor of the earlier mark is able to establish that
such mark is a well known mark and that the requirements of Section
11(2) are satisfied, the registration cannot be refused on that ground.
6. As regards the absolute grounds of refusal, such grounds
were not raised in the examination report. The impugned order
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(T)CMA(TM)/108/2023
becomes unsustainable on that ground. In addition, as stated by the
appellant in the reply to the examination report, the mark should be
compared as a whole and not by splitting a mark into components.
7. For all these reasons, the impugned order cannot be
sustained and is hereby set aside. By taking the facts and
circumstances into account, this is an appropriate case for the
application to be accepted for advertisement subject to the limitation
that the appellant shall not claim exclusive use of the words SURGI
or WAX, when used separately. This order shall not be binding on
opponents, if any. The appeal stands disposed of on the above terms.
21.09.2023
rna/gvn
Index : Yes / No
Internet : Yes / No
Neutral Citation: Yes/No
https://www.mhc.tn.gov.in/judis
(T)CMA(TM)/108/2023
SENTHILKUMAR RAMAMOORTHY,J
rna/gvn
(T)CMA(TM)/108/2023
(OA/6/2021/TM/CHN)
21.09.2023
https://www.mhc.tn.gov.in/judis
