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The court noted that even though there was a procedural error in the examination of the trademark application, the registration of Rajesh Kumar Taneja Trading should not be canceled. The court opined that without prima facie evidence that the disputed trademark was identical or deceptively similar to a trademark on record, the registration could not be faulted.
The Delhi High Court, recently, held that competing trademarks have to be viewed in their entirety and cannot be dissected in parts to be compared. The court made such observations in an appeal filed by L’Oreal India Pvt Ltd against Rajesh Kumar Taneja Trading.
“The trademarks have to be viewed as a whole and it would not be permissible to compare the competing trademarks by dissecting parts of the trademarks and comparing them”, the bench of Justice Vibhu Bakhru and Justice Tara Vitasta Ganju held.
L’Oreal India Pvt Ltd, a wholly-owned subsidiary of M/s L’Oreal, was engaged in the manufacturing, distribution, and sale of hair care, skincare, toiletries, beauty products, and related items. Rajesh Kumar Taneja Trading as Innovative Derma Care was the registered proprietor of the contested trademark.
Rajesh Kumar Taneja Trading applied for the registration of the contested trademark in Class 03 on April 16, 2010, claiming its usage since November 16, 2009. On January 3, 2012, the Registrar of Trademarks (Respondent No. 2) issued an examination report citing objections due to similar trademarks already on record. The accompanying search report mistakenly referred to CHARIWASH instead of CLARIWASH. Rajesh Kumar Taneja Trading’s application was duly advertised, and the mark CLARIWASH was correctly published in the Trademark Journal on January 16, 2012, indicating its usage since November 16, 2009.
On May 18, 2012, the Registrar issued the Registration Certificate for Rajesh Kumar Taneja Trading’s application, incorrectly noting it as CHARIWASH. A rectification application was filed and approved on June 14, 2012, resulting in the issuance of the corrected certificate for CLARIWASH.
L’Oreal India filed for the cancellation of the contested trademark before the Intellectual Property Appellate Board (IPAB), which was later transferred to the Court. The application was rejected.
L’Oreal India, represented by Advocate Shravan Kumar Bansal, argued for cancellation on the grounds that its predecessor, CCPL, had legitimately adopted the CLARI formative marks and expanded their usage over time, including the adoption of CLARIWASH around 2010-11.
The Single Judge dismissed the application for removing the contested trademark from the Register of Trademarks. The court concluded that Rajesh Kumar Taneja Trading could not be blamed for the Registrar of Trademarks' error in issuing a faulty examination report. The Judge determined that there was no similarity between the contested trademark and CLARI-FI likely to cause confusion.
Advocate Bansal, challenged the impugned judgment, arguing that the Single Judge had erred in failing to recognize that the flawed examination of Rajesh Kumar Taneja Trading's application for trademark registration invalidated the registration of the contested trademark in its favor.
Secondly, Advocate Bansal asserted that the Single Judge erred in concluding that L’Oreal India’s CLARI formative marks, including CLARI-FI, were not deceptively similar to the contested trademark.
The court, addressing whether the registration of the disputed trademark for Rajesh Kumar Taneja Trading was invalidated due to an erroneous examination report, observed that the examination report contained a mistake, as the search for similar marks was conducted using "CHARIWASH" instead of the contested trademark.
The court, per Rule 33 of the Trademarks Rules, 2017, noted that the Registrar was mandated to examine the application in accordance with the Act, which involved searching the Register to identify any identical or deceptively similar trademarks for the same goods or services. In this case, the Registrar had conducted such a search as per Rule 33(1) of the Rules, examining earlier trademarks to determine if any identical or deceptively similar trademarks existed.
The court further observed that the initial part of Rule 33(1) indicated that the search was necessary for examination under the Act. This examination required the Registrar to determine whether the registration should be refused under Section 9 or any other grounds under Section 11 of the Act.
Furthermore, the court noted that the contested trademark was registrable, and there were no grounds for refusal under Section 9. The court observed that the issue centered on whether the Registrar had correctly examined whether the trademark's registration should be refused due to its similarity to an earlier trademark, which might cause public confusion or association with the earlier trademark. It was evident that the search report erroneously used "CHARIWASH" instead of "CLARIWASH," implying the search was limited to marks similar to "CHARIWASH."
The court held that Rajesh Kumar Taneja Trading’s application was advertised in the Trademark Journal, providing the appellant or its predecessor an opportunity to oppose the registration, which they did not utilize.
Therefore, it was concluded that the registration of the disputed trademark should not be reconsidered due to a minor procedural error, especially after nearly 14 years. Accordingly, the appeal was dismissed.
For Appellants: Advocates Shravan Kumar Bansal and Ajay Amitabh SumanFor Respondents: Advocates Pramod Kumar Singh, and Priya NagpalFor Union: Standing Counsel Harish Vaidyanathan Shankar with Advocates Shoumendu Mukherji, Megha Sharma and Akanksha GuptaFor Registrar of Trademarks: Advocates Srish Kumar Mishra, Alexander Mathai Paikaday, Lakshay Gunawat and Krishnan V
Case Title: Loreal India Pvt Ltd v Rajesh Kumar Taneja Trading As Innovative Derma Care And Anr (2024:DHC:5150-DB)
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