Delhi High Court quashes order rejecting Twentieth Century Fox's plea to register trademark ‘AVATAR’ for jewellery & watches
The registration application of Century Fox was rejected by the Senior Examiner of Trade Marks on the ground that ‘AVATAR’ is visually and phonetically similar to ‘AVATHAR’.
;The Delhi High Court on Monday quashed the order of the Trade Marks Registry, New Delhi whereby the plea of production house Twentieth Century Fox Film Corporation for registering the ‘AVATAR’ trademark for jewelry and watches to promote the movie ‘AVATAR: The Way of Water’, which was released in December last year had been rejected.
A single judge bench of Justice C. Hari Shankar held that the basis on which the registration application of the production house was rejected was that the same was visually and phonetically similar to another mark ‘AVATHAR’ and this was incorrect.
The high court set aside the order passed by the trademark registry senior examiner on September 13, 2022, and said, “As appellant’s mark was never advertised, having been rejected at an initial stage, the registrar is directed to advertise the mark and proceed thereafter in accordance with law.”
While examining Section 11(1) of the Trade Marks Act which states that mere similarity or identity of the mark of which registration is sought, and the earlier mark, is not sufficient ground to reject the application seeking trademark registration, the high court observed that it is the senior examiner who is to compare the two marks and assess whether ‘AVATAR’ was identical or similar to ‘AVATHAR’, whether the goods and services covered by the two marks were identical or similar and whether any confusion can be created because of this.
“In that view of the matter, it is not necessary for this Court to enter into the exercise of comparing the goods or classes in respect of which registration was sought, as identity or similarity of the marks and identity or similarity of the goods are required to be cumulatively satisfied for either of clauses (a) and (b) of Section 11(1) to apply, the conjunctive link, in each clause, being ―and‖, not ―or‖. If the competing marks are neither identical nor similar, therefore, no occasion arises to compare the goods or services in respect of which the marks are registered, or proposed to be registered,” the court observed.
“The court is of the opinion that the senior examiner erred in merely emphasising the phonetic similarity between ‘AVATHAR’ and ‘AVATAR’, without recognising the fact that the cited mark was a composite device mark containing a sketch, as well as the word AVATHAR written in two languages, compositely registered, with no registration of its individual parts or elements,” the high court said.
It also observed that no person of “average intelligence and imperfect recollection” would get confused between the two marks if Twentieth Century’s plea is allowed.
Case Title: TWENTIETH CENTURY FOX V. THE REGISTRAR