The Bombay High Court recently came down
heavily on Registrar of Trade Marks and the Senior Examiner for failing to
consider submissions and pass reasoned orders before denying registration of
trademarks, calling it a “complete abdication” of their quasi-judicial
functions.
A single bench of Justice Riyaz Chagla set
aside an order of the Senior Examiner of Trade Mark’s refusing registration in
one such case and remanded the matter back for fresh consideration. The court
directed him to consider the applicant’s submissions and pass a reasoned order.
“It has been observed by this Court in a
series of matters which have come up that although there have been submissions
and documents in support of the Petitioner’s case for registration of the Trade
Marks in the replies which have been filed before the Registrar of Trade Marks,
these are not being considered.”
The court added that the replies were
filed with “application of mind” and the “least expected” was that the adjudicating
officer would “peruse the reply and extend to it the bare courtesy of
application of mind.”
There is complete abdication by the
Registrar of Trade Marks / Senior Examiner of Trade Marks in quasi-judicial
functions vested in them by the Trade Marks Act and Trade Marks Rules.
The impugned order reduces Section 18(5) of the Trade Marks Act to a
redundancy,” Justice Chagla added.
In the case at hand, I Am The Ocean, LLC
filed a Commercial Miscellaneous Petition seeking to set aside an order of
August 23, 2021 passed by the Examiner of Trade Marks, Trade Marks Registry,
Mumbai.
Advocate Hiren Kamod for the petitioner
submitted that after the August order he approached the Senior Examiner
claiming that there were no reasons in the order and that it had only
referred to Section 11(1) of the Trade Marks Act, 1999 and had further referred
to the trademarks cited when the Provisional Trade Mark was refused.
On November 9, 2022 the Senior Examiner of
Trade Mark passed a replica of the first order without even considering his
submissions, Kamod argued.
Kamod cited his submissions to argue that his
client had made out a case of distinctiveness. Moreover, the trademark was
registered in the European Union and New Zealand.
The subject mark is completely different
in all respects i.e. phonetically, visually and structurally from the cited
mark when viewed in its entirety, he submitted. He added that
the trademark had to be seen as a whole.
Advocate Shreyas Deshpande for the
Registrar of Trademarks claimed the order was reasoned.
Justice Chagla accepted the petitioner’s
submissions that the subject mark should be viewed in its entirety. “There are
submissions that the subject mark is unique and coined device.
The words “I AM” is surrounded by a
cursive letter “O” which has a stroke extending to the right that ends with two
wave crests. This appears to have been put forward after much thought and
deliberation by the Petitioner and which produces the impression of a
distinctive trade mark,” the court observed.
The judge further noted the Registrar
failed to refer to the petitioner’s submissions and the authorities cited
weren’t considered before holding that the cited marks are identical /
similar having similar goods / services.
There is no independent application of
mind on the part of the Senior Examiner of Trade Marks to the Reply submissions
canvassed by the Petitioner and thus the impugned order cannot be stated
to be a reasoned order as contended on behalf of the Respondent.
Accordingly, the court set aside the
Senior Examiner of Trade Marks order and remanded the matter back for
reconsideration.
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