The Registrar must provide a reasoned order when refusing trade mark registration, considering substantial evidence of prior use and international reputation.

ORDER :

MANISH PITALE, J.

1. The petitioner, in short referred to as Yamaha in this petition, has challenged order dated 20^th May 2021 passed by the respondent-Registrar/Examiner of Trade Marks, whereby an application moved by the petitioner for registration of trade mark ‘WR’ was refused. The respondent found that there was likelihood of confusion in the mind of public between the trade mark of the petitioner, of which registration was sought, and similar trade marks already on the register. In this context, Section 11(1) of the Trade Marks Act, 1999, was invoked by the respondent.

2. Before referring to the submissions made on behalf of the petitioner and the respondent, it would be appropriate that the facts leading to the filing of the present petition are taken into account.

3. As per the petitioner, Yamaha Company was founded on 1^st July 1955 in Japan and that with time it has achieved the status of being a leading manufacturer of motorcycles and marine products as also All-Terrain Vehicles (ATVs) and other such products. The petitioner has stated that it is the second largest in motorcycle sales in the world and that it is a world leader in water vehicles sales.

4. Yamaha Motors India Private Limited is a wholly owned Indian subsidiary of the petitioner with headquarters at Chennai and manufacturing facilities at various places in India. The petitioner Yamaha has already introduced and sold various products, including motorcycles in India. In that light, it has achieved distinctiveness globally in its name and brand Yamaha.

5. The petitioner has coined and adopted various distinctive trade marks from time to time and one such trade mark is WR. The petitioner states that it adopted the said trade mark WR in August 1990, in respect of two wheeler and three wheeler products, parts and accessories and that it has sold its products bearing the trade mark WR in 131 countries since 1999 and presently, it is selling the same in at least 62 countries.

6. It is stated that a particular variant of the petitioner’s motorcycle bearing the trade mark WR received a Red Dot Design Award in 2013 and that the reach of the said trade mark WR has been global from the time of its inception in the year 1990. It is further stated that since the petitioner intends to launch its WR range of motorcycles in India, information regarding the same is made available in the social media and on the internet on various web-sites, including indianautosblog.com, zigwheels.com, bikedekho.com, gaadi.com, etc. It is in this backdrop that, on 5^th November 2018, the petitioner filed its application for registration of the trade mark WR with the respondent in class 12, which pertains to motorcycles, motor scooters, mopeds, etc. On 28^th November 2018, the Trade Marks Registry sent an email of First Examination Report (FER) citing the mark of Honda Motor Company Ltd. i.e. WR-V registered in class 12 itself as a conflicting mark and gave opportunity to the petitioner to respond to the same.

7. The petitioner submitted initial response to the FER on 26^th December 2018 and subsequently a detailed response was submitted on 8^th July 2020, for consideration before the respondent-Registrar. Hearing was fixed for 20^th May 2021. By the impugned order dated 20^th May 2021, the respondent refused to accept the application for registration of the trade mark WR of the petitioner by invoking Section 11(1) of the Trade Marks Act. Aggrieved by the same, the petitioner has filed the present petition. Upon notice being issued, the respondent filed reply affidavit support