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IN THE HIGH COURT OF DELHI AT NEW DELHI
PRATHIBA M. SINGH, J.
M/s Subros Educational Society - Appellant
Versus
Union Of India - Respondent
C.A. (COMM.IPD-TM) 1 of 2021
Decided on : 19-05-2022
Trade Marks Act, 1999 - Sections 9 and 11 - Trademarks - Refused Registration - Appellant - M/S. SUBROS EDUCATIONAL SOCIETY, has filed present appeal challenging impugned order passed by Senior Examiner, Registrar of Trademarks - By said order, mark ‘Step By Step High School’, applied for by Appellant, vide Trademark Application in Class 41, has been refused registration.
Finding of the Court :
Mark ‘Step By Step’ has been used by Appellant in respect of educational services - Said mark has been used as a name of play school as also higher levels of schooling and has acquired goodwill and reputation - It is submitted by Mr. Bhasin, ld. Counsel for Appellant that in view of expansion of its branches in other fields of educational services, mark “Step By Step High School” was applied for - Application for registration of mark ‘Step By Step High School’ shall proceed for advertisement in trademark journal - Said mark shall be advertised within a period of four months - If there is any opposition to said trademark application, opposition shall be decided in accordance with law, without being effected by any of observations made in present order - Let present order be served upon Respondent - Registrar of Trademarks, through Mr, Harish Vaidyanathan Shankar, ld. CGSC.
Result: Appeal allowed.
JUDGMENT :
Prathiba M. Singh, J.
1. This hearing has been done through hybrid mode.
2. The Appellant - M/S. SUBROS EDUCATIONAL SOCIETY, has filed the present appeal challenging the impugned order dated 15th February, 2019 passed by the Senior Examiner, Registrar of Trademarks, New Delhi. By the said order, the mark ‘Step By Step High School’, applied for by the Appellant, vide Trademark Application bearing No.2891488 in Class 41, has been refused registration, under Sections 9 & 11 of the Trade Marks Act, 1999. The operative portion of the order dated 15th February, 2019 is set out below:
* The applicant advocate Ranjan Jha appeared. I have heard the argument and also perused the documents available on record. The same and similar mark is already on record, hence, objection under Section 9 and 11 is sustained, application is refused for registration.”
3. The details of the trademark Application bearing No.2891488 in Class 41 relating to the mark ‘Step By Step High School’ is set out below:
|
| (NOT FOR LEGAL USE) |
| A» on Date: 19/05/2822 Statu* : Refated | View TM Annlication 1 View Examination Resort |
| I'M Application No. | 2891488 |
| Class | 41 |
| Date of Application | 29/01/2015 |
| Appropriate Office | DELHI |
| State | DELHI |
| Country | Bidia |
| Filing Mode | Branch Office |
| TM Applied For | STEP BY STEP HIGH SCHOOL |
| TM Category | TRADEMARK |
| Trade Mark Type | WORD |
| User Detail | Proposed to be used |
| Certificate Detail |
|
| Valid up to- Renewed upto |
|
| Proprietor name | (1) SUBROS EDUCATIONAL SOCIETY (REGD.) Society |
| Proprietor Address | 0-71, GROUND FLOOR, WORLD TRADE CENTER. BARAKHAMBA LANE, NEW DELHI -110 001. |
| Email Id | * * * ‘mco@intnl.neun |
| Agent name | BHASIN & CO. [6437] |
| Goods & Service Details | [CLASS: 41] EDUCATIONAL SERVICES, INCLUDING PROVIDING EDUCATIONAL INSTUCTIONS; EDUCATIONAL RESEARCH; ARRANGING AND CONDUCTING EDUCATIONAL CONFERENCES, WORKSHOPS AND SEMINARS AND DISTRIBUTION OF TRAINING MATERIALS IN CONNECTION THEREWITH; PROVIDING ONLINE EDUCATION AND INFORMATION; BOOK AND JOURNAL PUBLISHING, CONTINUING EDUCATION SERVICES FALLING UNDER CLASS 41. |
| Associated Trademarks | 1301297,1549619,2891475,2891478,2891480, 2891482, 2891484, 2891486 |
4. A perusal of the above order shows that the same is for ‘Step By Step High School’, which is a variant of the Appellant’s registered trademark. The Appellant has several similar registrations, such as “Step By Step” bearing No.1301297, as well as “Step By Step School” bearing No. 1549619.
5. The mark ‘Step By Step’ has been used by the Appellant in respect of educational services since the year 1990. The said mark has been used as a name of the play school as also higher levels of schooling and has acquired goodwill and reputation. It is submitted by Mr. Bhasin, ld. Counsel for the Appellant that in view of the expansion of its branches in other fields of educational services, the mark “Step By Step High School” was applied for.
6. Accordingly, the rejection of the said mark, in the face of the earlier registrations in the name of the Appellant for the mark ‘Step by Step’, as also the long user, is unsustainable. The impugned order dated 15th February, 2019 is, accordingly, set aside.
7. The application bearing No.2891488 for the registration of the mark ‘Step By Step High School’ shall proceed for advertisement in the trademark journal. The said mark shall be advertised within a period of four months. If there is any opposition to the said trademark application, the opposition shall be decided in accordance with law, without bei
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