Introduction:
This appeal under Section 91 of the Trade Marks Act assails order dated 13th September 2022, passed by the Senior Examiner of Trade Marks in the office of the Trade Marks Registry, New Delhi, rejecting Application No. 4280126 submitted by the appellant for registration of the mark, in Class 14.
Consequent to submission of the aforesaid application by the appellant, the office of the trademark Registry issued First Examination Report (FER) dated 25th September 2019, objecting to the registration of the proposed mark under Section 11(1) of the Trade Marks Act, 1999, on the ground that it was deceptively similar to two earlier marks. The two marks which were cited
were Avathar(i), registered in favor of Mr. A. Shrivinasan and Avathar(ii), registered in favor of Mr. Avathar Varatharajan.
Of these two marks, the former mark was not renewed and, accordingly, was deemed to be statutorily abandoned under Section 25(3) of the Trade Marks Act.
Key Points:
- The appellant filed a trademark application which was rejected by the Senior Examiner of the Trademark Registry.
- The rejection was based on an objection under Section 11(1) of the Trade Marks Act, 1999, due to alleged similarity with two pre-existing marks.
- One of the cited marks was not renewed and was deemed abandoned under Section 25(3) of the Trade Marks Act.
- The appellant argued that their mark was phonetically and visually distinct, unlikely to cause confusion, and that the goods for which the mark was sought were different from those of the cited marks.
Court Observations:
- The court observed that the Senior Examiner may have erred in rejecting the application without considering the distinctiveness and differences in goods.
- The court noted that the non-renewed mark should not have been a basis for rejection as it was deemed abandoned.
- The court emphasized the importance of considering the marks in their entirety, as per Section 17 of the Trade Marks Act, rather than dissecting them into components.
Conclusion:
- The High Court quashed the impugned order dated 13th September 2022, which rejected the appellant’s trademark application.
- The court directed the Registrar to advertise the appellant’s mark and proceed in accordance with the law.
- The appeal was allowed, and any miscellaneous applications related to the case were disposed of.
- The court ordered the decision to be uploaded on the court’s website within 24 hours.
View full Judgment TWENTIETH CENTURY FOX FILM CORPORATION versus THE REGISTRAR