Complete Abdication By Registrar Of Trademarks: Bombay HC Remands Back Matter To Consider Submissions Of Party
The Bombay High Court while dealing with a case has remanded back the matter to the Registrar of Trademarks for considering the submissions of the petitioner within a period of eight weeks on the ground that there was complete abdication as per the Trade Marks Act.
A Single Bench of Justice R.I. Chagla held, “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 Bench remanded back the matter to consider the material on record in support of the petitioner and then give a reasoned order.
Advocates Hiren Kamod and Kunal Kanungo appeared for the petitioner while Advocates Shreyas Deshpande and Sandeep Ramon appeared for the respondent.
In this case, a plea was filed by the petitioner, ‘I Am The Ocean, LLC’ against the Registrar of Trade Marks (respondent) seeking to set aside the order passed in 2021. The petitioner upon receiving an order called upon the Senior Examiner of Trade Marks to furnish reasons as the said order was an un-reasoned one.
The said order had only referred to the Section 11(1) of the Trade Marks Act, 1999, and had further referred to cited marks in Provisional Refusal which were considered to be identical or similar having similar goods/services. The same was held likely to cause confusion among public/probable consumers and the applied mark for registration was accordingly not accepted and refused.
The High Court after hearing the contentions of the counsel observed, “There are submissions that the subject mark is unique and coined device. The words “I AM” is surrounded by a cursive letter “O” which has a stroke extending to the right that ends with two wave crests. This appears to have been put forward after much thought and deliberation by the Petitioner and which produces the impression of a distinctive trade mark. There are submissions that the cited mark “I AM” is completely different in all respects i.e. phonetically, visually and structurally from the subject mark when viewed its entirety.”
The Court noted that the order passed by the respondent cannot be stated to be a reasoned one as contended on behalf of its counsel and that the finding of the subject mark not being registered should have been supported by cogent reasons that the order lacks.
“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”, said the Court.
Accordingly, the Court set aside the order passed by the respondent and remanded back the matter.
Cause Title- I Am The Ocean, LLC v. Registrar of Trade Marks (Neutral Citation: 2023:BHC-OS:4949)
