Evergood Blenders Private Limited vs Registrar Of Trade Marks

This is the Appeal under Section 91 of the Trade Marks Act, 1999 against the Order of Registrar of Trade Marks, Delhi dated 06/08/2019 along

with grounds of decision provided in support thereof dated 11/10/2019 refusing the registration of Trademark AMBROSIA under Trade Mark

Application No. 3330301 in Class 32.

The Appellant states that this application was filed in respect of Beers, mineral and aerated waters, and other non-alcoholic drinks; fruit drinks and

fruit juices; syrups and other preparations for making beverages included in Class 32. The mark was filed on 05/08/2016. The Usage claimed is

proposed to be used.

FACTS OF THE CASE

The Appellant submitted that in order to distinguish the goods and services from the goods and services of others, amongst various trademarks, has

adopted the impugned trade mark and has been using the said trade mark openly, extensively, continuously and uninterruptedly since adoption. Since

then, the said trademark of the Appellant has become connotative and denotative of the Appellant only and no one else. The high quality products of

the Appellant have led to an immense amount goodwill being generated in favour of the Appellant. All products of the Appellant bear the impugned

trade mark in some form or other.

The Appellant submitted that by virtue of such honest adoption, continuous and extensive use of the applied for trade mark in the market, the

Appellant has acquired and retained an exclusive right to the use of the trademark, and common law rights in the said trademark. The said trademark

has achieved such distinctiveness and degree of association with the Appellant, that the use of an identical or a deceptively similar mark in relation to

any goods or services is most likely and bound to be taken as indicating a connection in the course of trade or of rendering of services between those

goods and the persons using and having knowledge of the mark in relation to goods and services of the Appellant under the afore mentioned trade

mark.

Pursuant to filing the impugned application, the same was examined by the Respondent herein, and the Respondent issued an Examination Report

dated 24/11/2016, wherein, the Respondent raised the objections under Section 11 of the Trade Marks Act, 1999. The Appellant, furnished a reply

thereto vide their letter dated July 26, 2017 filed on July 26, 2017.

The Respondent fixed the matter for hearing on August 06, 2019 at 10: 30 AM and issued a Show Cause hearing notice dated June 06, 2019 to the

Applicant's Attorneys. The Applicant's Attorneys, pursuant to the said hearing notice, appeared on the date fixed before the Senior Examiner on

August 06, 2019 and made oral submissions and arguments in support of the said application and in response to all objections raised in the Examination

Report. The Applicant's attorneys specifically pointed out that the objection under Section 11 no longer survives, inasmuch as, the cited marks under

no. 821595 and 1867235 ought to be removed due to non-filing of renewal request within prescribed time limit and as on date both marks cannot be

said to be registered whereas the marks under no. 3065646 and 3074977 have now been refused registration and hence these marks cited in the

search report cannot be a barrier in seeking registration of the said trademark.

Respondent has subsequently refused the impugned application while upholding the objections under Section 9/11 of the Trade Marks Act, 1999 and

has passed the impugned order dated 06/08/2019 and provided grounds in support of the refusal on October 11, 2019. Relevant portion of Statement of

grounds of decision are as under:

The Applicant advocate Mr. Gaurav appeared, argued, heard and checked the details of application, it appeared that, deceptively similar

registered/pending mark with the same goods are on record, moreover it is a proposed to be used mark, hence refused.

Aggrieved by the impugned orders dated 06/08/2019 and 11/10/2019 passed by the Respondent, the Appellant has filed the present appeal before

us.

ARGUMENTS MADE BY THE APPELLANT

The learned counsel for the Appellant Mr. Gaurav Miglani submitted that the Registrar of Trade Marks had erred by refused the application for the

impugned trademark. The Appellant argued that the Hearing Officer of Trade Marks has not sufficiently appreciated the submissions in the response

filed by the Appellant and has not considered the Appellant's submissions regarding the cited conflicting four marks before rejecting the Subject

Application by erroneously passing the Impugned Order.

Counsel for the Appellant argued that there is no reference, discussion or findings to the evidence and submissions of the Appellant in the decision

of the Hearing Officer, the Appellant argued that the Impugned Order is violative of the principles of natural justice, and is liable to be set aside as it

has not been passed in consonance with the principles of natural justice.

Counsel for the Appellant submitted that the impugned order has also been arbitrarily made without giving any reasoning for refusal of the

application. There is no reference, discussion or findings to the evidence and submissions of the Appellant in the decision of the Hearing Officer,

which makes the impugned order violative of the principles of natural justice, and is liable to be set aside.

We have examined the Registrar’s orders dated 06/08/201 and 11/10/2019 and reviewed the submissions of the Appellant. It is noted that the

Registrar has not considered the evidence, documents and submissions tendered in support of the subject mark. None of the documents, submissions,

information available prima facie were taken into consideration prior to issuance of the Impugned Order.

The impugned Order is a non-speaking order and the Respondent has upheld objections  under  Section  11(l)(b)  and  11(2)(a)  of

 the  Act, without appreciating and without adjudicating the validity of the cited marks in the search report. The only objection is under Section 11

which also cannot be sustained as the cited marks are not registered. The cited marks are not valid as some of them have not been renewed whereas

some have been refused registration hence such marks cannot create any bar to the registration of the mark applied. No reason has been given as to

on what basis and which cited mark creates an obstacle under Section 11. Therefore refusal under Section 11(a) of the Trade Marks Act, 1999 is

untenable in law. The Appellant is an honest concurrent user of a trademark under Section 12 of the Trade Marks Act, 1999.

Regarding the refusal of the impugned trademark application under Section 11(b) of the Trade Marks Act, 1999, the objection no longer survived,

inasmuch as, the cited marks under No. 821595 and 1867235 were to be removed due to non-filing of renewal request within prescribed time limit and

as on date both marks could not be said to be registered whereas the marks under no. 3065646 and 3074977 had been refused registration and hence

these marks cited in the search report also could not be a barrier in seeking registration of the said trademark. The status of the cited marks has been

placed before us. The Impugned thus erroneously holds that the impugned mark is refused as the mark is identical with or similar to earlier marks in

respect of identical or similar description of goods and services and because of such identity or similarity there exists a likelihood of confusion on the

part of the public, inasmuch as, none of the cited marks are validly subsisting as on date. Therefore refusal under Section 11(b) is untenable in law.

The Impugned Order further fails to consider that that the said trademark is a word mark and as a whole is inherently distinctive. The said mark

has no connection or nexus whatsoever with the goods in respect of which the said trademark was sought to be registered.

It is noted that the Registrar has not considered the evidence, documents and submissions tendered in support of the subject mark. None of the

documents, submissions, information available prima facie were taken into consideration prior to issuance of the Impugned Order.

The applied trademark has been genuinely, extensively and continuously used by the Appellant since its filing in 2016. In addition, owing to genuine

and continuous use and promotion of the applied trademark, it has acquired distinctiveness and is associated in the minds of the consumers, the public

in general and the members of the trade. Therefore, the impugned mark is inherently distinctive and is eligible for registration.

Taking into consideration of the above, the Appeal is hereby allowed. Impugned orders dated 06/08/2019 and 11/10/2019 passed by the Registrar

of Trade Marks is set aside. The Trade Mark Application No. 3330301 in Class 32 is allowed to proceed on to advertisement in the Trade Marks

Journal. There is no order regarding costs.