Cape Union Mart International Pty Limited vs Registrar Of Trade Marks

The present Appeal is filed under Section 91 against the Order dated 18/02/2019 refusing

Trademark application for the device Trademark “ †vide application No. 2946360in class 25 for Goods related to “Clothing, footwear, headgear.†(“The Impugned

Orderâ€​).

The Appellant states that this application was filed on 20thApril 2015as proposed to be used. A formal Examination Report was issued on 27th June 2016 on the ground that

“THE MARK SUBMITTED FOR REGISTRATION IS IDENTICAL WITH OR SIMILAR TO THE MARKS CITED IN THE SEARCH REPORT ENCLOSED

HEREWITH†and thus objectionable under Section 11 of the Trademark Act, 1999.The Appellant had replied back to the said Examination Report on 25th July 2016 and13th October

2016 and stated that the out of three cited marks two are not renewed and hence cannot be objected based on the same and other third cited mark is different and also Appellant

claimed that the word “OLD KHAKI†has been in usage since 1999 and the new artistic logo which is distinctive has been proposed in 2005 and filed voluminous documents to

support the use of the subject mark.

Thereafter, the Hearing was scheduledon 28th January 2019. At the hearing the Respondent maintained the Objections despite the arguments of the Appellant and submission of

documents. The Appellant made submissions with respect to the distinctiveness of its trade mark as it is a composite mark and even filed documents to the effect of usage. Having

heard the detailed submissions on behalf of the Appellant, the Respondent passed an order refusing the mark on 18th February 2019(impugned order) refusing the Appellant’s trade

mark application on the ground that the trademark applied for is objectionable under Section 11 of Trade Marks Act, 1999 and maintained the initial refusal made in the Examination

Report. The Order stated as follows â€" “Natasha, Adv appeared. I have heard the argument and also perused the documents available on record and no affidavit filed for claiming

of user. The same and similar mark is already on record, hence, objection under section 11 is sustained, application is refused for registration.

* 11(1)(a) - Relative grounds for refusal of registration.- The said trade Mark is refused for registration because of its identity with an earlier trade mark and similarity of goods or

services covered by the trade mark; or

* 11(1)(b) - Relative grounds for refusal of registration. The said trade Mark is refused for registration because of its similarity to an earlier trade mark and the identity or similarity of

the goods or services covered by the trade mark there exists a likelihood of confusion on the part of the public,which includes the likelihood of association with the earlier trade mark.â€​

Aggrieved by the impugned order and decision dated 18th February 2019(impugned order)passed by the Respondent, the Appellant has filed the present appeal before us.

The learned counsel for the Appellant Ms.Preksha Sharmasubmitted that the Registrar of Trade Marks had erred by deciding that the impugned device trademark Ҡof the

Appellant as deceptively similar to the cited marks in the examination report. The case of the Appellant is that the trademark is a composite mark and inherently distinctive trademark

for goods under class 25 and would use the mark altogether as composite mark.

The learned counsel for the Appellant submitted that the Appellant has honestly adopted the trademark OLD KHAKI in the year 1999. The Appellant under the OLD KHAKI trade

mark offers men, women and children durable and affordable items that are comfortable and stylish. From men’s casual fashion to women’s accessories, this brand offers

everything; and in the year 2005, the Appellant adopted the distinctive

trade mark consisting of the goat device which it uses in conjunction with its OLD KHAKI trademark. It is pertinent to note that the Appellant also uses the goat device and the OLD

KHAKI in a standalone manner as both are source identifiers and associates the goods under these marks to be originating from the Appellant.

The Appellant submitted that the counsel for the Appellant vehemently argued the matter before Respondentand stated that (a) Registration No. 952922- this mark stands removed,

(b) Registration No. 942614- it has not been renewed since 01/09/2010 and (c) Registration No. 797591 for KHAKIS- this mark is holistically different from the subject logo

trademark- ; Â hence, the three cited marks are not valid citations against the subject trademark. Also, the Appellant produced all the evidence to establish that the

subject trademark is in use since 1999. However the Ld. Examiner refused to consider the use documents filed given the application being filed on “proposed to be used†basis and

no opportunity was given to the Appellant to amend the user date and/or file the user affidavit.

The Appellant submitted it has registration for the subject trademark in India as per the following details- Registration No. 2946357 for the trade mark in Class 18

dated 20/04/2015 [bearing Certificate No. 2209936 dated 26/06/2019]. This registration has been issued subsequent to filing of the present Appeal/ the impugned order, though it has

been Accepted & Advertised TMJ No. 1888 on 11/02/2019. Copy of Registration Certificate is annexed herewith as Annexure-A. The Appellant also stated that it has foreign

Registrations- The Appellant’s trade mark is registered in various countries around the world, across several classes, including but not limited to, European Union, Hong Kong,

Macau, Mozambique, Angola and Australia, Botswana, China, Namibia, South Africa and Zambia.

The Appellant  submitted that the Respondent failed to consider the fact that Appellant honestly and bonafidely adopted the Trademark  since the

year 2005 and has been using the same till date extensively and continuously. The Appellant further contented that the Respondent failed to consider that the Appellant’s

Trademark has acquired distinctive character by virtue of prior use since 1999/2005.

FINDINGS OF THE BOARD

We have examined impugned order dated 18th February 2019passed by the Respondentand reviewed the submissions of the Appellant. The examiner report has cited similar mark

applications. However as narrated by the Appellant two cited marks are non-existence and one mark “KAKHI†is dissimilar. Further the submissions that the marks co-exist in the

market without any confusion and the submissionsthat the Appellant’s thus confusion would not arise should have been taken into record by the Respondent.

It is further pertinent to mention that there is no speaking order or reasoning provided for the refusal of the impugned mark or in the statement of grounds as to why the usage

document or affidavit has not taken into consideration for passing the impugned order. It need to be noted that Trade Marks Act 1999 is a Special Act and thus all Sections are to be

applied strictly as per law stipulated in the Statue. Under no circumstances self-made procedure and guidelines can be adopted even for the sake of earlier disposal of any matter. The

interpretation of any Section should not be misinterpreted for the sake of convenience.

The Respondent being creation of the Act and constituted under the provisions of the Act, is expected to follow the provisions of law meticulously in passing detailed orders more

specifically in consonance with Sub Section 5 of Section 18 of the Act read with Rule 36 of Trade Marks Rules 2017. Section 18(5) of the Act reads as under “In the case of

refusal or conditional acceptance of an application, the Registrar shall record in writing the grounds for such refusal and conditional acceptance and the material used by him in arriving

at his decision.†A similar language has been used in Rule 36. Section 18 of the Trademark Act, 1999 is an incumbency provision which cannot be disregarded by the Respondent in

passing its orders.

The impugned order displays that Respondents has not considered the submission of the Appellant and seems to have been passed without any application of mind. If the

Respondent would have considered the contentions of the Appellant and discussed the documents filed by it; the Respondent would have considered the application under even at least

under Section 12 Honest and Concurrent usage based on the user documentation filed.

It is also contended by the learned counsel for the appellant that the subject trademark has been held to be distinctive and hence Registered by numerous Trade Marks Offices

worldwide includingEuropean Union, Hong Kong, Macau, Mozambique, Angola and Australia, Botswana, China, Namibia, South Africa and Zambia and filed documents to support the

same.

In view of the circumstances mentioned above, the present appeal is allowed setting aside the impugned order dated 18th February 2020 passed by the Respondent. The Application

No. 2946360 in Class 25 may proceed with advertisement in the Trademarks Journal and proceed further in accordance with law.

No costs.