Madras High Court
M/S. Nichino Private Limited vs The Registrar Of Trademarks on 12 June, 2025
Author: Senthilkumar Ramamoorthy
Bench: Senthilkumar Ramamoorthy
CMA(TM).No.23 of 2024
IN THE HIGH COURT OF JUDICATURE AT MADRAS
DATED: 12.06.2025
CORAM
THE HONOURABLE MR.JUSTICE SENTHILKUMAR RAMAMOORTHY
CMA(TM)No.23 of 2024
M/s. Nichino Private Limited
at No. A-24/25, APIE, Bala Nagar,
Hyderabad-500037. ... Appellant
-vs-
The Registrar of Trademarks,
Office of the Trademark Registry,
Guindy, Chennai-600032. ... Respondent
Prayer: Civil Miscellaneous Appeal (Trademarks) filed under Section 91 of
the Trademarks Act, 1999, to set aside the order dated 04.07.2024, passed
by the respondent, refusing the application for registration of trademark
under No.5374731 in Class 5 and consequently direct the respondent to
proceed with the trademark by advertising the said application in
Trademarks Journal.
1/8
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CMA(TM).No.23 of 2024
For Appellant : Ms. Meha Varshini M.R.
for Mr.Ramji G.
Mr.R.Sathish Kumar
For Respondent : Mr.J.Madhanagopal Rao, SPC
JUDGMENT
This appeal is directed against order dated 04.07.2024 rejecting Trade
Mark Application No.5374731 for the registration of the word mark
“METAMORPH”. The appellant applied for the registration of the above
mentioned mark on 17.03.2022 on “proposed to be used” basis in relation to
pesticides, insecticides, weedicides, fungicides, biocides and herbicides. By
examination report dated 19.05.2022, objections were raised on relative
grounds by citing three marks. The appellant replied to the examination
report on 17.06.2022 and asserted that the trade mark of the appellant is
distinguishable from the cited marks and that there would be no likelihood
of confusion among the public. The appellant also filed written
submissions. The impugned order was issued in these facts and
circumstances.
2. Learned counsel for the appellant referred to the above sequence of
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dates and events and pointed out that the appellant stated in the written
submissions that the third cited mark (Trade Mark No.5084050) is not being
applied in relation to pesticides, insecticides, weedicides, fungicides,
biocides and herbicides. She further submitted that it is stated therein that it
was being used in relation to medicines and that the products to which it
was being applied are no longer available. Learned counsel also submitted
that the appellant had provided evidence of use of the trade mark in relation
to the above mentioned products. By referring to the impugned order,
learned counsel submits that the contentions of the appellant were
disregarded and that it was erroneously recorded that the cited mark
“metamorph i” was being used for a long time in comparison to the
appellant's mark. By pointing out that the mark cited in the impugned order
was applied for on proposed to be used basis on 11.08.2021, and that the
appellant applied shortly thereafter on 17.03.2022, learned counsel also
submits that the appellant is entitled to the registration of the mark as an
honest and concurrent user or on account of special circumstances.
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3. Learned counsel for the respondent refuted these contentions by
pointing out that the mark cited in the impugned order is currently
registered. He further submits that the registration is in the same class
(Class 5) and that the description of the goods in relation to which the mark
is registered covers preparations for destroying vermin, fungicides and
herbicides. Therefore, he contends that no interference is warranted with the
impugned order.
4. In the impugned order, after recording that the mark “metamorph i”
was registered under Trade Mark No.5084050, the respondent has recorded,
in relevant part, as under:
“The cited mark is being used since long back in
comparison to the subject applied mark. In view of such
similarities between the nature of the marks and their
applied specification of goods/services, there exists a
strong likelihood of confusions on the part of the
consumers, as they are likely to assume and confuse that
the applicant's specification of goods/services are
connected or otherwise associated with the conflicting
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marks. The consumers may be under the mistaken belief
that the applicant's goods/services originate from the
conflicting cited mark or that they have some trade
connection or affiliation.
Present mark is phonetically and visually similar to
the conflicting mark which is mentioned in the
examination search report and also the cited mark is well
in prior use in respect of the similar nature of
goods/services which sought by the applicant. The
applicant is the subsequent user by filing of application
date among the conflicting mark application filing date.
In view of these mentioned grounds, the Registrar of
Trademarks has opined that the applicant has
deliberately chosen the subject mark in an effort to taken
the goodwill and reputation of the conflicting marks.
Applicant has no bona fide adoption of the subject mark
in respect of the applied goods/service description. If the
subject mark is allowed for registration, the object of the
Trade Marks Act, 1999 would not be fulfilled and the
purity of the Register will be affected.”
5. In light of the undisputed factual position that the application for
registration of the cited mark was on “proposed to be used” basis, the
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conclusion that it was used since long appears to be ex facie erroneous.
While recording the above findings, there is no discussion on the appellant's
contention that the cited mark was earlier used in relation to medicines and
that no products bearing the cited mark are currently available in the market.
It is also noticeable that the other two marks cited in the examination report
do not find place in the impugned order. On examining the status of the
cited mark, it appears that all the goods under Class 5 have been mentioned
therein. It appears highly unlikely that a manufacturer of medicines or
dietary supplements would also be engaged in manufacturing pesticides,
fungicides and herbicides. Therefore, the respondent should examine
whether the cited mark is being used in relation to similar goods and also
consider the contentions as to whether the appellant is entitled to
registration under Section 12 of the Trade Marks Act, 1999. For all these
reasons, interference with the impugned order is called for.
6. Therefore, impugned order dated 04.07.2024 is set aside and the
matter is remanded for reconsideration. After providing a reasonable
opportunity to the appellant, a decision on advertising before acceptance
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shall be taken within one month from the date of receipt of a copy of this
order.
7. CMA(TM)No.23 of 2024 is disposed of on the above terms
without any order as to costs.
12.06.2025
Index : Yes / No
Internet : Yes / No
Neutral Citation: Yes / No
kj
To
The Registrar of Trademarks,
Office of the Trademark Registry,
Guindy, Chennai-600032.
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SENTHILKUMAR RAMAMOORTHY,J.
Kj
12.06.2025
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