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2020 Supreme(Del) 312
IN THE HIGH COURT OF DELHI AT NEW DELHI
PRATHIBA M. SINGH, J.
Jai Bhagwan Gupta - Petitioner
Versus
Registrar of Trade Marks & Ors. - Respondents
W.P.(C) 11872 of 2005, CM APPLs. 8809 of 2005 & 8811 of 2005
Decided On : 03-03-2020
For the Petitioner:Mr. Sudershan K. Bansal, Mr. Ajay Amitabh Suman and Mr. Vinay Shukla, Advocates
For the Respondent: Mr. Vishal Mittal, Senior Panel Counsel
The central legal point established is that the Registrar of Trademarks must conscientiously consider trademark applications, especially before advertising them, to maintain the purity of the Register and prevent undue burden on trademark owners.
Headnote:
Trademarks - Examination of Trademark Applications - Sections 9, 11, 13, 14, 15, 16, 20 of the Trademarks Act, 1999
Fact of the Case:
The petitioner filed a writ petition against the Registrar of Trademarks and two respondents, alleging that despite having registered trademarks for 'JEERA PUJARI' and 'JAI PUJARI BRAND', the Registrar was advertising similar trademarks in the same class, leading to a burden on the petitioner.
Finding of the Court:
The court found that the Registrar should examine trademark applications properly and efficiently, considering the provisions of Sections 9 and 11 of the Trademarks Act, 1999.
Issues: The issues revolved around the Registrar's duty to examine trademark applications and the petitioner's grievance regarding the burden of opposing similar trademarks.
Ratio Decidendi: The court emphasized the obligations of the Registrar under Sections 9, 11, and 20 of the Act, highlighting the need for conscious consideration before advertising trademarks and the importance of maintaining the purity of the Register.
Final Decision: The court directed the Registrar to decide pending oppositions, consider the petitioner's registrations when advertising similar trademarks, and ensure that not all marks proceed for advertisement and registration.
JUDGMENT :
Prathiba M. Singh, J.
1. The present writ petition has been filed by the Petitioner - Shri Jai Bhagwan Gupta, proprietor of M/s. Bhagwan Kirana Company, against the Registrar of Trademarks and Respondent Nos. 4 & 5. The Petitioner has used the trademark “JEERA PUJARI” in respect of jeera and sauff since 1980. The Petitioner also has registration for “JEERA PUJARI” word mark since 1987 bearing no.472153. The said mark has been duly renewed by the Petitioner. The Petitioner also has a second trademark bearing no.631107 for “JAI PUJARI BRAND” label.
2. The grievance of the Petitioner is that despite the Petitioner having registered the trademarks for “JEERA PUJARI” word mark and “JAI PUJARI BRAND” label mark, the Registrar of Trademarks is advertising various trademarks consisting of the word “PUJARI” in respect of identical goods falling in Class 30. It is, thus, submitted that though the Petitioner has filed oppositions in respect of these marks, the same has become a burden upon the Petitioner who is saddled with costs for oppositions and for keeping a watch on the trademark journal. Under such circumstances, the Petitioner prays for the following reliefs:
“(i) issue a writ of certiorari quashing the impugned publication of the trademarks of respondent no. 4 and 5 published in the trade mark journals being ANNEXURES P - 4 & 5 as illegal and unconstitutional and proceedings taken towards its registration;
(ii) issue a writ of mandamus directing respondents no. 1 and 2 to perform the-official functions in consonance with provisions of law and principles of natural justice and further to desist from publishing trademarks identical with or deceptively similar to petitioner's trade marks in trade mark journals without following due procedures and provisions of law as envisaged under the Trade Marks Act and Rules there under;”
3. The submission of Mr. Bansal, ld. counsel appearing for the Petitioner is that the Trademark Registry ought to be examining trademark applications in a proper and efficient manner, so as to ensure that even marks which are identical to registered trademarks, are not cleared for advertisement, which in turn, increases the burden upon the applicants and their attorneys. It is his submission that the registered trademark of the Petitioner consists of the word mark “PUJARI” for spices in Class 30 and in the same Class, similar word marks are being permitted to be advertised for registration. He submits that the stand of the Registrar of the Trademarks is merely that the Petitioner ought to exercise the statutory remedy and nothing more. Reliance is placed upon Sections 9 and 11 of the Trademarks Act, 1999 (hereinafter ‘the Act’).
4. Mr. Vishal Mittal, ld. Senior Panel Counsel, appearing for the Registrar of Trademarks submits that there are two applications against which the Petitioner has raised grievance i.e. trademark application bearing no.1188208 already stands abandoned and the second application bearing no.1285292 is pending for registration and the Petitioner has already opposed the said mark. The Petitioner, thus, having availed the statutory remedy, is not entitled to seek any relief by way of the present petition.
5. This Court has perused the record and heard ld. counsels for the parties. The obligation of the Registrar of Trademarks whenever a new trade mark application is filed, would be to examine the application in terms of Sections 9 & 11 of the Act, as well as the other relevant provisions in order to see if there are any grounds, which are attracted in respect of the said application. Section 9 of the Act consists of the absolute grounds for refusal of a trademark and Section 11 consists of the relative grounds for refusal of registration of a mark. The prohibitions are contained in Section 13 and further conditions are stipulated under Sections 14, 15 & 16 of the Act. The completion of formalities are also to be examined by the Registrar of Trademarks. The examiner has also to consider if
