Madras High Court
Berkadia Proprietary Holding Llc vs The Registrar Of Trade Marks on 26 August, 2025
Author: Senthilkumar Ramamoorthy
Bench: Senthilkumar Ramamoorthy
CMA(TM)/11/2025
IN THE HIGH COURT OF JUDICATURE AT MADRAS
DATED: 26.08.2025
CORAM
THE HONOURABLE MR.JUSTICE SENTHILKUMAR RAMAMOORTHY
CMA(TM)/11/2025
Berkadia Proprietary Holding LLC
Rep by its Authorized Representative Mr.Om Prakash,
Having at 323 Norristown Road, Suite 300, Ambler PA, 19002,
United States of America.
Also at. DLF Cyber City, Plot No. 129 to 132 9th Floor Block 2,
Gachibowli Village, Serlingampally Mandal,
Hyderabad, Telangana-500019 ... Appellant
-vs-
The Registrar of Trade Marks
Trade Marks Registry, Intellectual Property Office Building,
G.S.T. Road, Guindy, Chennai 032 India ... Respondent
PRAYER: Civil Miscellaneous Appeal (Trade Marks) is filed under
Section 91 of the Trade Marks Act, 1999, pleased to set aside the Refusal
Order dated 17.12.2024 passed in Subject Application No.2381187 in Class
36 by the Respondent, thereby accepting the Subject Application and
directing the respondent to advertise the Subject Application in the Trade
Marks Journal.
1/5
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CMA(TM)/11/2025
For Appellant : Mr.Navod Prasanan
for Mr.Himanshu Deora
For Respondent : Mr.J.Madanagopal Rao, SPC
**********
JUDGMENT
This appeal is directed against order dated 17.12.2024 rejecting Trade
Mark Application No.2381187 for the registration of the trade mark
“INVESTOR QUERY”. The above mentioned application was filed on
06.08.2012 on a “proposed-to-be-used” basis. By examination report dated
17.05.2013, the Registrar of Trade Marks raised the objection that the trade
mark is devoid of distinctive character. By reply dated 17.11.2014, the
appellant stated that the mark had acquired a distinctive character as a result
of use. The impugned order was issued in the above facts and
circumstances by reiterating that the trade mark is devoid of distinctive
character.
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CMA(TM)/11/2025
2. After endeavouring to establish that the mark is distinctive at the
previous hearing on 14.08.2025, including by relying upon the judgment of
the Delhi High Court in Dubai Islamic Bank v. Union of India and another,
dated 04.12.2019 in W.P.(C).No.12749 of 2019, at today's hearing, learned
counsel for the appellant has placed on record the request in Form TM-M
for an amendment of the mark as “BERKADIA INVESTOR QUERY”
instead of “INVESTOR QUERY”.
3. As a consequence of the above mentioned request for amendment,
there is a material change in the nature of the mark sought to be registered.
The Registrar of Trade Marks cannot be faulted for issuing the impugned
order upon examining the original application relating to the mark
INVESTOR QUERY. The proposed amendment is by addition of the
element BERKADIA, which is also the first word in the name of the
appellant.
4. By taking note of this material development, the order impugned
herein is set aside and the matter is remanded for reconsideration. Such
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CMA(TM)/11/2025
reconsideration shall be undertaken after accepting the request for
amendment. After providing a reasonable opportunity to the appellant, a
reasoned fresh order shall be issued within three months from the date of
receipt of a copy of this order.
5. CMA(TM)/11/2025 is disposed on the above terms. No costs.
26.08.2025
rna
Index : Yes / No
Internet : Yes / No
Neutral Citation: Yes / No
To
The Registrar of Trade Marks
Trade Marks Registry, Intellectual Property Office Building,
G.S.T. Road, Guindy, Chennai 032 India
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CMA(TM)/11/2025
SENTHILKUMAR RAMAMOORTHY,J
rna
CMA(TM)/11/2025
26.08.2025
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