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Synopsis

A single-judge bench of the Bombay High Court comprising Justice RI Chagla recently came down heavily on the Registrar of Trademarks and the Senior Examiner for rejecting a trademark application without considering the reply.

"The least expected of the Officer adjudicating the application is to 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," the court observed 

The high court was hearing an appeal filed by "I Am Ocean LLC" which sought to set aside the order rejecting its trademark application by the Registrar of Trademark. The order was passed in August 2021. The application was rejected on the grounds that it was similar to another mark.

The petitioner upon receiving the said order called upon the Senior Examiner of Trade Marks to furnish reasons as the said Order was an un-reasoned order. However, the Senior Examiner rejected the application on similar grounds that it was identical or similar having similar goods/services. 

The petitioner then approached the high court seeking to set aside the order of the Registrar of Trademark.

Advocate Hiren Kamod appearing for the petitioner argued that the order was nothing but a replica of the said order passed by the Registrar and that the same observations were recorded to arrive at the conclusion that the subject mark applied for is not registrable.

He further submitted that there were detailed submissions made by the petitioner and the petitioner had made out a case as to the subject mark having distinctiveness. It was submitted that several authorities were relied upon in support of the petitioner’s case, including the fact that the subject mark had been granted registration in the European Union and New York.

Advocare Shreyas Deshpande appearing for the Registrar of Trademark argued that there were reasons in the order that the mark is identical/similar having similar goods/services and the same is likely to cause confusion among the public/consumers and therefore the same is not registrable. He argued that the order passed was a reasoned order.

The court agreed with the submissions of the petitioner and said that,

"The impugned order has made no reference to the submissions and / or the authorities relied upon by the Petitioner. Thus, these submissions and authorities have not been considered in 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. The finding of the subject mark not being registered should have been supported by cogent reasons which the impugned," the court said.

The court also noted that in a series of matters before the high court, although submission and documents are submitted by the applicants, the same are not being considered.

"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 replies are drafted with application of mind," the court noted

Case Title: I Am The Ocean LLC vs Registrar of Trade Marks