Bombay HC Grants Relief to Yamaha, Sets Aside Order Denying ‘WR’ Trademark

The Bombay High Court has recently set aside the Registrar of Trade Marks’ order that had denied registration of Yamaha's mark ‘WR’ while citing a likelihood of confusion with Honda Motor Company’s registered mark ‘WR'.

While allowing major relief to Yamaha, a bench led by Justice Manish Pitale stated, "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... a direction ought to have been issued for advertisement before acceptance, in the facts and circumstances of the present case."

In doing so, the bench also directed the Registrar of Trade Marks to advertise the petitioner’s application before acceptance in terms of the proviso to Section 20(1) of the Trade Marks Act. As per the said section, the authority, before accepting the application, can advertise in order to seek objections from the public.

".......The petition is allowed. The impugned order is set aside. The respondent is directed to advertise the application of the petitioner before acceptance in terms of proviso to Section 20(1) of the Trade Marks Act. Thereafter, the respondent shall proceed further in accordance with law.....," the court ordered.

High Court was hearing a plea filed by Yamaha challenging the Registrar of Trade Marks' order dated May 20, 2021, which refused registration of the trademark ‘WR’ under Section 11(1) of the Trade Marks Act on the ground that it was similar to Honda’s registered mark ‘WR-V’, leading to a likelihood of confusion.

Before the High Court, Yamaha had contended that the trademark ‘WR’ was adopted in 1990 and that it had been in use since in over 131 countries.

Emphasising the continuous international use, it was Yamaha's case that it intends to launch WR motorcycles in India. Further, Yamaha had contended that the mark has prior registrations in the US, EU, Australia, Japan, and other countries. It was argued that there is no real likelihood of confusion between WR and Honda’s ‘WR-V’.

On the other hand, the respondent – the Registrar – had argued that Section 11(1) of the Trade Marks Act had been rightly invoked. It contended that it would be necessary for the petitioner to demonstrate spillover of the reputation and goodwill of its mark in India.

Weighing these contentions, the High Court at the outset noted that there exists a similarity between WR and WR-V. However, it held that the Registrar failed to pass a reasoned order.

"This Court finds substance in the contention raised on behalf of the petitioner that 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. Such a detailed reasoned order could also have assisted this Court in appreciating the material in a comprehensive manner."

Observing that Yamaha's trademark has been in the international markets concurrently, the court said, ".... Its mark has been in the international markets concurrently with the cited mark for a long period. This could be a situation creating special circumstances in favour of the petitioner. Yamaha’s application was dismissed without adequate reasoning...."

Further, the court opined that instead of rejecting the application outrightly, the Registrar could have invoked the proviso to Section 20(1).

Accordingly, the Court allowed the application and set aside the impugned order.

Case Title: Yamaha Hatsudoki Kabushiki Kaisha v. Registrar of Trade Marks