Consent of the existing trademark holder can nullify objections to registration of a similar mark.

JUDGMENT (Oral)

C. Hari Shankar, J.

1. This appeal is directed against the order dated 7th September 2022, passed by the Senior Examiner in the office of the Registrar of Trademarks refusing registration to [IMG] device mark and rejects Application No. 4024218 of the appellant, of which the appellant sought the registration in Class 30, covering "Coffee including instant coffee, coffee mixtures, coffee beverages, coffee premix, tea including instant tea, iced tea, tea beverages, tea-mix powders, beverages made of tea, tea premix, flavoured premixes for tea and coffee, sugar".

2. Consequent on the application being filed by the appellant for registration of the aforesaid device mark, First Examination Report (FER) was issued on behalf of the Registrar of Trademarks on 2nd January 2019, objecting to the registration of mark as sought by the appellant under Section 11(1) of the Trademarks Act, 1999 on the sole ground that an identical/deceptively similar mark "AMAZON" stood registered in favour of Amazon Technologies, Inc., 410 Terry Avenue North, Seattle, Washington 98109, USA for "coffee, tea, cocoa, sugar, rice, tapioca, sago, artificial coffee, flour and preparations made from cereals, bread, pastry and confectionery, ices, honey, treacle, yeast, baking-powder, salt, mustard, vinegar, sauces (condiments), spices and ice".

3. The appellant responded to the FER, whereupon the impugned order came to be passed by the Senior Examiner on 7th September 2022, rejecting the appellant's application under Section 11(1) of the Trademarks Act and sustaining the objection raised in the FER on 2nd January 2019.

4. Aggrieved thereby, the appellant has approached this Court by way of the present appeal under Section 91 of the Trademarks Act.

5. During the pendency of this appeal, Amazon Technologies has issued the following Letter of Consent dated 3rd January 2023 addressed to the learned Registrar of Trademarks:

"LETTER OF CONSENT

January 3, 2023

To,

The Registrar of Trade Marks

Office of the Trade Mark Registry

Baudhik Sampadha Bhawan

Plot No. 32, Sector 14

Dwarka, Delhi - 110075

Sub: Consent to registration of the trade mark [IMG] by Vending Updates India Private Limited.

I, Aimee Mahan, Assistant Secretary, duly authorized in this regard by Amazon Technologies, Inc., a Nevada Corporation having its address at 410 Terry Avenue North, Seattle, Washington 98109, United States of America (hereinafter, "Amazon"), hereby state that:

1. Vending Updates India Private Limited ("VUIPL") has applied for registration of the trade mark in [IMG] Classes 29 & 30 under the Indian application nos. 4024217 & 4024218 respectively.

2. Amazon hereby gives its consent to registration of the mark in [IMG] Classes 29 & 30 under the Indian applications nos. 4024217 & 4024218 respectively.

In view of the foregoing, the Learned Registrar is requested to allow VUIPL's application nos. 4024217 & 4024218 for the trade mark [IMG] in Classes 29 & 30 to proceed towards publication and registration.

Amazon Technologies, Inc.

Sd.

Name: Aimee Mahan

Designation: Assistant Secretary"

6. In view of the 'no objection. issued by the Amazon Technologies INC, the sole objection raised by the learned Senior Examiner against registration of the [IMG] device mark in favour of the appellant under Class 30 does not survive.

7. Accordingly, the impugned order is quashed and set aside. Application No. 4024218, submitted by the appellant, is once again placed before the learned Registrar of Trademarks for further proceedings. Needless to say, in case there is no other impediment, the mark can proceed towards registration.

8. The appeal stands allowed accordingly. Miscellaneous applications also stand disposed of.

9. Order to be uploaded on the website of this Court within 24 hours.