Madras High Court
Ab & T Lifestyle Spaces Llp vs The Registrar Of Trade Mark on 21 November, 2024
Author: Abdul Quddhose
Bench: Abdul Quddhose
2024:MHC:3923
CMA (TM) No.16 of 2024
IN THE HIGH COURT OF JUDICATURE AT MADRAS
DATED : 21.11.2024
CORAM
THE HON'BLE MR. JUSTICE ABDUL QUDDHOSE
CMA (TM) No.16 of 2024
AB & T LIFESTYLE SPACES LLP,
represented by Dasarath Abhishek Reddy .. Appellant
-vs-
The Registrar of Trade Mark,
Trade Mark Registry, Chennai,
Anna Salai, Guindy Industrial Estate,
Tamil Nadu - 600 032. .. Respondent
Prayer: This Civil Miscellaneous Appeal filed under Section 91 of the Trade
Marks Act, 1999 read with Section 151 of C.P.C. and Rule 2(4) of the
Madras High Court Intellectual Property Rights Division Rules, 2022 to set
aside the order of refusal dated 24.05.2024 by the Trade Mark Registry,
Chennai and consequently direct that the subject mark (ARC) with
Application No.5171639 be accepted and advertised in the Trade Marks
Journal.
For appellant : Mr.R.Sathish Kumar
For respondent : Mr.M.Karthikeyan,
CGSPC
1/10
https://www.mhc.tn.gov.in/judis
CMA (TM) No.16 of 2024
JUDGMENT
This appeal has been filed, challenging the impugned order dated
24.05.2024 passed by the respondent, refusing to register the appellant's
Trade Mark 'ARC - A GATEWAY TO YOUR FUTURE' on the ground that
the said mark is objectionable under Section 11(1) of the Trade Marks Act,
1999 and also on the ground that the appellant's Trade Mark has not
acquired distinctiveness by way of long use as mentioned in the proviso to
Section 9 of the Trade Marks Act.
2.The appellant has challenged the impugned order on the ground of
violation of principles of natural justice and on the ground of arbitrariness.
Learned counsel for the appellant drew the attention of this Court to the
cited marks reflected in the examination report of the respondent dated
09.11.2021 and would submit that similar device marks have been allowed
to be registered by the respondent and therefore, there cannot be any
discrimination with regard to the appellant's Trade Mark alone. He also drew
the attention of this Court to the impugned order and would submit that
arbitrarily and without any evidence, the respondent, under the impugned
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order, has observed that the cited marks reflected in the examination report
are in use. He would submit that despite the registration of Trade Mark in
respect of the cited marks, they may not be put to use. He would submit that
under the impugned order, the respondent has not stated as to how they got
the information that the cited marks are in use. Learned counsel for the
appellant drew the attention of this Court to the respective cited marks and
would submit that as seen from the same, their operation is for a particular
territory and the territories and the said territories does not fall within the
territory, where the appellant is operating namely, the State of Karnataka.
3.Learned counsel for the appellant, on instructions, would submit
that the appellant is willing to use the mark 'ARC - A GATEWAY TO
YOUR FUTURE', restricted only to the State of Karnataka. Learned counsel
for the appellant would submit that under the impugned order, despite the
fact that there is no disclosure in the examination report of the respondent
that the appellant's mark is hit by the proviso to Section 9 of the Trade
Marks Act, 1999 (absolute grounds for refusal of registration), the
respondent, without giving an opportunity to the appellant to raise
objections, has refused to register the appellant's trade mark under the
impugned order.
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4.On the other hand, the learned Standing Counsel appearing for the
respondent would reiterate the contents of the impugned order and only in
view of the fact that the cited marks, as reflected in the examination report,
are in use, the appellant's Trade Mark Application in respect of its Trade
Mark 'ARC - A GATEWAY TO YOUR FUTURE' has been refused to be
registered under the impugned order. He would submit that the respondent
has rightly refused to register the appellant's Trade Mark as there are other
similar registered marks and if the appellant's mark is allowed to be
registered, it will create confusion in the minds of the public. According to
him, the respondent has rightly refused to grant registration in favour of the
appellant under Section 11 of the Trade Marks Act 1999.
5.As seen from the impugned order, it does not disclose as to how the
respondent got information that the cited marks, reflected in the examination
report, are in use in the market. The appellant categorically contends that the
cited marks are not being put to use in the state of Karnataka, where the
appellant is presently operating its business activity. Learned counsel for the
appellant, on instructions also submitted that the appellant if granted
registration, will restrict its operation by using the Trade Mark 'ARC - A
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GATEWAY TO YOUR FUTURE' only within the territory of the State of
Karnataka. No opportunity has been granted to the appellant as seen from
the impugned order to refute the contentions of the respondent that the cited
marks are in use. As only for the first time under the impugned order, the
appellant has been informed by the respondent that the cited marks, as
reflected in the examination report, are is use. As seen from the cited marks
for which registration has been granted by the respondent, though they may
be similar marks, the area of their operation has been restricted only to those
territories disclosed in the Trade Mark Registration Certificates. The said
territory does not include the territory, where the appellant operates namely,
the State of Karnataka. The appellant has also undertaken as seen from the
submission made by the learned counsel for the appellant, on instructions
that they will restrict their business operation by using the mark 'ARC - A
GATEWAY TO YOUR FUTURE' only to the State of Karnataka alone.
6.It is not one similar mark that has been registered, but the cited
marks are four in number, which according to the appellant, are similar
marks and identical marks to that of the appellant's trade mark. The
appellant has categorically contended that arbitrarily, despite the fact that
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there are four other cited marks, the appellant alone has been discriminated
and not allowed to get its trade mark 'ARC - A GATEWAY TO YOUR
FUTURE' registered. Learned counsel for the appellant contended that once
the appellant is permitted to publish its mark in the Trade Mark Journal, any
third party, who intends to oppose the appellant's claim for registration, is
always having the liberty to oppose the registration of the appellant's trade
mark by filing an Opposition Petition.
7.Therefore, the learned counsel for the appellant contended that no
prejudice will be caused to the respondent as well as to any third party if the
appellant is allowed to publish its trade mark in the Trade Marks Journal. In
the examination report of the respondent, wherein they have cited marks,
which according to them, are identical to that of the appellant, they have not
disclosed the second reason for rejection of the appellant's application, i.e.
that the appellant's mark has not acquired distinctiveness by way of long
use. Only for the first time, in the impugned order, the said reason has been
given as the respondent has held that the appellant's trade mark has not
acquired distinctiveness by way of long use and therefore hit by the proviso
to Section 9 of the Trade Marks Act, 1999. Section 9 of the Trade Marks
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Act deals with absolute grounds for refusal to register the Trade Mark.
8.For the foregoing reasons, this Court is of the considered view that
the impugned order is a non speaking order with regard to the contentions of
the appellant as raised in this appeal and is also an order passed in violation
of the principles of natural justice as no opportunity was granted to the
appellant to refute/rebut the contentions of the respondent that the cited
marks (four of which are registered) are in use even today. The respondent
has also not taken into consideration the appellant's undertaking that they
will restrict their operation only to the State of Karnataka and the respondent
has also for the first time through the impugned order has given a new
reason for refusing to register the appellant's Trade Mark on the ground that
the trade mark has not acquired distinctiveness by way of long use.
9.It is settled law that only through speaking orders and by adhering
to the principles of natural justice, the respondent can refuse granting trade
mark registration. However, in the instant case as seen from the impugned
order, it is a non-speaking order and the respondent has not adhered to the
principles of natural justice.
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10.In the result, the impugned order passed by the respondent is
hereby quashed and this appeal is allowed by directing the respondent to
publish the appellant's trade mark 'ARC - A GATEWAY TO YOUR
FUTURE' in the Trade Mark Journal and in case any Opposition Petition is
filed opposing the registration of appellant's trade mark, the respondent is
directed to consider the same, on merits and in accordance with law, after
affording a fair hearing to the appellant as well as the third party, who
opposes the registration of the appellant's trade mark. It is made clear that
the publication has to be effected by placing restriction on the appellant to
use their trade mark to the State of Karnataka alone. No costs.
21.11.2024
vga
Index : Yes/No
Speaking/Non Speaking Order
Neutral Citation Case : Yes/No
https://www.mhc.tn.gov.in/judis
To
The Registrar of Trade Marks,
Patent Office Intellectual Property Building,
G.S.T.Road, Guindy,
Chennai - 600 032,
Office of Trade Marks Registry.
https://www.mhc.tn.gov.in/judis
ABDUL QUDDHOSE,J.
vga
21.11.2024
https://www.mhc.tn.gov.in/judis
