Mohd. Ishtiyaque Qureshi vs Registrar Of Trade Marks

The present Appeal is filed under Section 91 against the Order dated 20/09/2019 refusing the review petition of the Appellant dated 08th January

2019 and consequently refused the Trademark application for the device Trademark “ †vide application No. 2835975in

class 43 for “SERVICES FOR PROVIDING FOOD AND DRINK; TEMPORARY ACCOMMODATIONâ€​ (“The Impugned Orderâ€​).

The Appellant states that this application was filed on03rd November 2014claimingprior usage of the mark since 01st January 2013. A formal

Examination Report was issued on 19th October 2016 both Section 9 and 11 Objections were taken by the Examiner..The Appellant had replied back

to the said Examination Report on 17th January 2017 and stated that the mark is unique combination of words and artistic logo and thus distinctive and

cannot be held to be descriptive or similar to other cited marks.

Thereafter, the Hearing was scheduledon 08th January 2019. At the hearing the Respondent maintained the Objections despite the arguments of

the Appellant. The Appellant made submissions with respect to the distinctiveness of its trade mark  as it is a composite mark

and the Applicant alone is the proprietor of the mark “KAKORI HOUSEâ€​. Having heard the detailed submissions

on behalf of the Appellant, the Respondent passed an order refusing the mark on 20th September 2019(impugned order) refusing the Appellant’s

trade mark application on the ground that the trademark applied for is objectionable under Section 9 of Trade Marks Act, 1999 and maintained the

initial refusal made in the Examination Report. The statement of grounds for the said order was communicated to the Appellant on 01st November

2019. The Order stated as follows â€" “* ADV. SAURAV appeared,argued,heard ,checked the details of the application, it appeared that,the

statement of case is not filed along with the review petition so there is no specific ground found for the reviewing the order,also Ld. council for the

applicant during his submission also could not highlight any error and/or mistake in the refusal order,also no new facts found as per the review petition

and oral submission,the refusal order is valid and justified,so review is refused.

* 9 - Absolute grounds for refusal of registration.

* 9(1)(a) - The trade mark is devoid of any distinctive character, that is to say,not capable of Distinguishing the goods or services of one person from

those of another person:

ADV. SAURAV appeared,argued,heard ,checked the details of the application, it appeared that,the statement of case is not filed along with the

review petition so there is no specific ground found for the reviewing the order,also Ld. council for the applicant during his submission also could not

highlight any error and/or mistake in the refusal order,also no new facts found as per the review petition and oral submission,the refusal order is valid

and justified,so review is refused.â€​

Aggrieved by the impugned order and decision dated 20th September 2019(impugned order), the Appellant has filed the present appeal before us.

The learned counsel for the Appellant submitted that the Registrar of Trade Marks had erred by deciding that the impugned device trademark “

â€​ of the Appellant as non-distinctive since the very mark is inherently distinctive trademark for services rendered under class 43.

The learned counsel for the Appellant submitted that the Appellant is one of the leading Chef engaged in business of providing food and drinks and

temporary accommodation. The Appellant’s services are well recognized and quite popular, the Appellant also stated that his father has served

celebrities like past prime ministers PanditJawarLal Nehru, LalBhadurSastri, Dr.ZakirHussain and all of them showered praise for the delicious

cuisines and that apart Bill Gates, Bill Clinton, Rahul Gandhi and Sonia Gandhi and several other dignitaries are regular visitors to the Appellant place.

The Appellant submitted that the counsel for the Appellant vehemently argued the matter before Respondent and also pointed out the fact that the

Appellant’s Trademark is in use since 2013 extensively and uninterruptedly. Pursuant to submissions, the Registrar/Sr. Examiner reserved the

Application for passing appropriate order.

The Appellant submitted that he the owner of the Indian Trademark “Mr.KOKORI†and its various variants and provided the list of the

Registered mark of the Appellant containing the word “KAKORIâ€​ in classes 16, 30, 42 and 43 in fact the list provided has an exactly similar mark

i.e., KAKORI HOUSE EXPRESS (Device of KH) has already been registered to the Appellant vide Application No.2109194 in class 43.

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

 since the year 01.01.2013 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 distinctive character and is exclusively associated with the Appellant alone. The Appellant had adopted the said mark and its variants

as an essential and material part of its domain name i.e., www.kakorihouse.com and has been using the same in course of business & trade in the

given segment of the Industry.

The Appellant stated that he was nominated for Best North Indian Standalone outlet by Times Food for continuously in the from the year 2013,

2014 and 2015 and won the title & awards for the year 2013 and 2015.

The Appellant submitted that the Respondent failed to consider the settled principle of law that a proprietor of the mark should be accorded with

the Registration of the mark. The Appellant submitted that the Respondent has erred in not considering the fact that the Appellant’s trademark is

having long prior use and is already Registered proprietor of the marks that were cited in the Examination Report and has Registration to exactly

similar mark (Label) design under Application No.2835974 in class 30.

The Appellant submitted that the rejection of the Appellant’s application is not only against Appellant’s interest but also against the public

interest, public policy and also contrary to the spirit of the Act.

The Appellant submitted that because the impugned Order passed by the Respondent has resulted in grave miscarriage of justice, hardship,

irreparable loss and injury to the Appellant as appellant has been using the Trademark since 2013 and by virtue of such long

use the Appellant has acquired common law rights in the said Trademark. Hence the Appellant is a person aggrieved by impugned order passed by

Registrar/Senior Examiner.

FINDINGS OF THE BOARD

We have examined impugned order dated 20th September 2019 passed by the Respondentand reviewed the submissions of the Appellant. It is

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.

In the present appeal admittedly the application of the appellant was rejected without any proper speaking orders. Even when the TM(M) was

filed in order to get the reasons in writing for refusing the application as per material available on record. The material available on record and reply to

the examiner report has not been discussed nor the plea raises was distinguished while rejecting the application after filing such applications on Form

TM(M) and merely mechanical/stereotypes orders are passed in various matters. The said orders are not acceptable in law. The justification of mass

disposal in one go or computerized orders without application of mind, without referring and discussion of the material available on record has no

meaning in the eyes of law.

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 and processed for Registration since the mark applied is already registered to the Appellant in

various variants and also registered exactly similar mark in other classes.

The Examination Report of the Respondent few marks of the Appellant and also marks “KK†as similar to the Appellant mark may be

assuming the letters “KHâ€​ to be “KKâ€​ or “KKâ€​ seems to be deceptively similar to “KHâ€​; however in the final orders Section

11 objections are not maintained and refusal is based on only Section 9 of the Trademark Act, 1999. We are unable to fathom the judgment of the

Respondent when the same mark is considered to be distinctive and Registration granted by the Respondent to similar mark containing similar words

“KAKORI HOUSEâ€​ in very same class how is the present application treated differently and held non-distinctive.

It is painful for us to see the working of the Respondent, particularly these kinds of orders without appreciating the documents submitted and

arguments advanced by the Applicants before it.In view of the circumstances mentioned above, the present appeal is allowed setting aside the

impugned order dated 20th September 2019 passed by the Respondent. The application of the appellant shall proceed further in accordance with law.

No costs.