Bombay High Court Sets Aside Denial To Register Yamaha's 'WR' Trademark, Says Registrar Must Give Reasoned Order For Pre-Acceptance Advertisement
The Bombay High Court stated that the Registrar of Trademarks must give a reasoned order for pre-acceptance advertisement.Justice Manish Pitale observed that “The Registrar is required to pass a reasoned order as to why a mark is being advertised after acceptance and also a reasoned order as to why a mark is being advertised before acceptance. In fact, the Registrar has the option of...
The Bombay High Court stated that the Registrar of Trademarks must give a reasoned order for pre-acceptance advertisement.
Justice Manish Pitale observed that “The Registrar is required to pass a reasoned order as to why a mark is being advertised after acceptance and also a reasoned order as to why a mark is being advertised before acceptance. In fact, the Registrar has the option of directing advertisement of a mark before acceptance under proviso to sub-Section (1) of Section 20 of the Trade Marks Act.”
In this case, a particular variant of the petitioner's motorcycle bearing the trade mark WR received a Red Dot Design Award in 2013 and that the reach of the said trade mark WR has been global from the time of its inception in the year 1990.
Since the petitioner intends to launch its WR range of motorcycles in India, information regarding the same is made available in the social media and on the internet on various websites, including indianautosblog.com, zigwheels.com, bikedekho.com, gaadi.com, etc.
It is in this backdrop that, the petitioner filed its application for registration of the trade mark WR with the respondent in class 12, which pertains to motorcycles, motor scooters, mopeds, etc. The Trade Marks Registry sent an email of First Examination Report (FER) citing the mark of Honda Motor Company Ltd. i.e. WR-V registered in class 12 itself as a conflicting mark and gave opportunity to the petitioner to respond to the same.
By the impugned order, the respondent refused to accept the application for registration of the trade mark WR of the petitioner by invoking Section 11(1) of the Trade Marks Act.
The petitioner submitted that the elaborate material placed on record of the respondent in the initial, as also the detailed response to the FER, was ignored by the respondent while passing the cryptic impugned order. The impugned order does refer to some of the precedents cited on behalf of the petitioner, but there is no discussion with regard to the same and the impugned order can be said to be devoid of any reasons.
The respondent submitted that the order passed by the respondent appears to be brief, but relevant reasoning has been recorded in the light of material placed before the respondent. It is specifically recorded that there is likelihood of confusion in the mind of the public between the trade mark of the petitioner and the cited mark, apart from other similar marks on the register and therefore, the impugned order cannot be found fault with.
“The respondent could have passed a detailed and well-reasoned order, particularly in the light of the elaborate material placed on record by the petitioner in response to the FER. The petitioner also stood deprived of an opportunity to raise specific grounds to challenge the reasons that could have been given by the respondent” opined the bench.
The bench stated that the petitioner has made out a case under proviso to sub-Section (1) of Section 20 of the Trade Marks Act and therefore, the Registrar could not have refused to accept the application of the petitioner and a direction ought to have been issued for advertisement before acceptance.
The Registrar was required to record reasons as to why such an option was being exercised, but the impugned order being cryptic in nature, shows no consideration of any of these aspects and the application of the petitioner has been refused directly upon reference to Section 11(1) of the Trade Marks Act. It cannot be said that the application of the petitioner could have been refused without first advertising it and hence, the petition filed by the petitioner deserves to be allowed to that extent, added the bench.
In view of the above, the bench allowed the petition.
Case Title: Yamaha Hatsudoki Kabushiki Kaisha v. The Registrar of Trade Marks
Case Number: COMMERCIAL MISCELLANEOUS PETITION NO. 650 OF 2022
Counsel for Petitioner: Darius Dalal
Counsel for Respondent: Abhishek Bhadang