Registrar Couldn’t Have Refused To Accept Application: Bombay High Court Allows Yamaha’s Plea In Case Involving ‘WR’ Trademark Similar To Honda
|Yamaha had challenged the Order of the Registrar/Examiner of Trademarks by which an Application for registration of trademark ‘WR’ was refused.
The Bombay High Court has allowed the Commercial Miscellaneous Petition filed by Yamaha Hatsudoki Kabushiki Kaisha in a case involving registration of ‘WR’ trademark being similar to that of Honda.
Yamaha had challenged the Order of the Registrar/Examiner of Trademarks by which an Application for registration of trademark ‘WR’ was refused.
A Single Bench of Justice Manish Pitale observed, “This Court is of the opinion 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, in the facts and circumstances of the present case.”
Advocate Darius Dalal represented the Petitioner while Advocate Abhishek Bhadang represented the Respondent.
Brief Facts
The Registrar/Respondent found that there was likelihood of confusion in the mind of public between the trade mark of the Petitioner, of which registration was sought, and similar trademarks already on the register. In this context, Section 11(1) of the Trade Marks Act, 1999, was invoked by the Respondent. Petitioner is a leading manufacturer of motorcycles and marine products as also All-Terrain Vehicles (ATVs) and other such products. It was stated that the Petitioner has adopted the ‘WR’ trademark in 1990 in respect of two-wheeler and three-wheeler products, parts and accessories, and that it has sold products bearing the trade mark WR in 131 countries since 1999 and presently, it is selling the same in at least 62 countries.
Since the Petitioner intended to launch its WR range of motorcycles in India, it filed an Application for registration of the said trademark. In 2018, the Trade Marks Registry sent an email 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. After its response, the Respondent refused to accept the Application and being aggrieved by this, the Petitioner was before the High Court.
Reasoning
The High Court in the above regard, said, “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.”
The Court remarked that 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.
The Court, therefore, directed the Respondent to advertise the Application of the Petitioner before acceptance in terms of proviso to Section 20(1) of the Trade Marks Act and thereafter, the Respondent shall proceed further in accordance with law.
“The respondent is directed to take appropriate action in terms of the directions given hereinabove, within two weeks of this order being produced before it”, it also directed.
Accordingly, the High Court allowed the Petition and set aside the impugned Order.
Cause Title- Yamaha Hatsudoki Kabushiki Kaisha v. The Registrar of Trade Marks (Neutral Citation: 2025:BHC-OS:8673)
Appearance:
Petitioner: Advocates Darius Dalal, Disha Mehta, Jehangir Gulabbhai & Bilimoria & Daruwalla.
Respondent: Advocates Abhishek Bhadang and Gauri Raghuwanshi.