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Sets Aside Trademark Refusal of Mark for Ayu Lifescience Over Flawed Comparison
The has set aside a order that refused to register the "AYU LIFESCIENCE" filed by , finding that the Registry committed a "glaring error" by relying on cited marks without verifying their validity and by failing to compare marks as a whole.
Justice Jyoti Singh, who heard the appeal under , remanded the matter for fresh consideration, directing the Registry to pass a reasoned order within three months after granting the appellant a hearing.
The Case of the 'Living Tree' Mark
Ayu Lifescience applied on to register a featuring the word "AYU LIFESCIENCE" alongside a distinctive tree device and colour combination, for goods in Class 05 covering pharmaceuticals, medical preparations, and herbicides. The Trademark Examiner issued an examination report citing three allegedly similar prior marks: a simply marked as "AYU", the mark "AYU18" (device), and the "AYU SHAKTI". The appellant filed a reply and attended a hearing, but the Registry passed an order on refusing registration under on grounds of and .
A Flawed Comparison: No Inquiry into Cited Marks' Status
Before the High Court, counsel for Ayu Lifescience argued that the Registry had overlooked critical facts about the cited marks. The "AYU" had been objected to and its application had remained unprosecuted since 2020. "AYU SHAKTI" was under opposition proceedings and yet to be finalized. Only "AYU18" was registered, but the appellant contended that its overall composition was "completely distinguishable" from the applied mark, which contained the additional word "LIFESCIENCE" and a pictorial tree element.
The respondent, represented by standing counsel , defended the refusal, arguing that the word "AYU" was the common to all marks and that the goods being pharmaceutical preparations warranted a strict approach to avoid confusion.
The High Court found merit in the appellant's submissions. Justice Singh observed that the Registry had "completely overlooked" the fact that two of the three cited marks were not
on the register.
"This is a glaring error in the impugned order and on this ground, the matter deserves to be remanded,"
the Court held.
Overlooked
The Court also faulted the Registry for failing to conduct a proper comparison of the applied mark with the only registered cited mark, "AYU18". The appellant had argued that when viewed as a whole, the marks were visually, structurally, and —the applied mark contained a tree picture, the word "LIFESCIENCE", and a unique colour combination. The appellant further submitted that the Registry had dissected the marks and been influenced solely by the commonality of the word "AYU", which violated the well-established .
Justice Singh agreed:
"Respondent has not entered into the exercise of comparing the applied mark with the cited mark on the parameters under
... and seems to have been influenced by the fact that both device marks have commonality of the word AYU, by dissecting the marks, which is against the
."
The Court noted that the appellant's alternative suggestion—registration with a disclaimer on using the word "AYU" as a standalone mark—was a possibility the Registry could have considered but did not.
'A Fresh Look at the Application'
Without expressing any final views on the merits of similarity, the Court concluded that the trademark application needed to be considered afresh. It partially allowed the appeal, set aside the impugned refusal order, and directed the to reexamine application no. 7057843 after giving the appellant an opportunity of hearing. The Registry must decide within three months, taking into account that two of the cited marks are under objection and opposition respectively.
The decision reinforces that trademark examiners must verify the legal status of cited marks before relying on them to refuse registration, and that comparisons must follow the —looking at marks in their entirety rather than isolating common elements.
