The main legal point established in the judgment is that the rejection of a trademark application can be justified based on phonetic and conceptual similarity with an earlier trademark, likelihood of confusion, and lack of uniqueness in the subject mark.

JUDGMENT (Oral)

1. Application no. 3487036 was filed by the appellant before the Trade Marks Registry for registration of the Mark [IMG] (hereinafter referred to as "the subject mark") in Class 11, for electric lamps, lighting apparatus and installations, luminaries chandeliers, lamp shades, lamps, led and fluorescent lights, flash lights, lanterns for lighting, lighting fittings and fixtures, decorative lighting, light diffusers, ceiling light, wall lights, outdoor lights, water proof lights, desk lamps, floor lamps, hanging lamps, lighting tubes, light bulbs, security lights, garden lights, mood lighting, display lighting etc. The appellant claimed user of the subject mark since 2014.

2. The Registrar, vide First Examination Report (FER) dated 7th March 2017, objected to the registration of the subject mark. In the FER, "M/s JAINSONS LITES" was cited as an earlier trade mark, for which Application No. 2242763, submitted by Mr. Rakesh Jain, seeking registration of the mark in Class 11 in respect of "electrical fancy lights, electrical goods, items and instruments", was already in existence with user claim of 2005. The FER objected to the registration of the subject mark on the ground that it was deceptively similar to the earlier mark "M/s JAINSONS LITES".

3. The appellant submitted his response to the FER on 1st May 2017. It was sought to be contended, in the response, that the trade mark "JAINSONS" had been adopted by the predecessor of the appellant in 1978 primarily in respect of lighting goods and was in use since then. The subject mark, it was submitted, was a highly stylised representation of the predominant feature of the trade name of the appellant, which was Jainsons Lights Pvt. Ltd., and also included 1978 as representing the year of adoption of the mark "JAINSONS". Moreover, it was submitted that the subject mark was in a unique colour combination of teal and black, which was specifically claimed while applying for registration of the subject mark. The reply also emphasised the goodwill and reputation that the appellant had gained since 1978.

4. The impugned order dated 27th April 2020 rejected Application No. 3487036 in the following terms:

"The mark applied for registration is objectionable under following provision of the Trade Marks Act, 1999-

The mark applied for registration is identical with/similar to earlier trademarks on record, as mentioned in the Examination report and by similarity of marks as well as similarity of goods and services covered under such marks, there exists a likelihood of confusion in the mind of public. As such the registration of the mark is objectionable under Section 11(1) of the Trade Marks Act 1999 ADV. HARISH appeared and argued and submitted that, the cited mark is different, heard, and checked the details of application, it appeared that. Reply perused not satisfactory, Deceptively and phonetically and conceptually similar registered mark no. 12242763 with the identical goods are on record, so it will cause the confusion to the public and in the market, moreover user claim since 2014, and user affidavit submitted along with the evidence in support has proved the user since 2014 which is subsequent to the user of the cited mark, and adv. also fails to establish the significance and uniqueness in the adoption of the trade mark, since the prefix is a common English term, as there is phonetically similarity with the cited mark, hence no difference between cited mark and the applicant mark, so; upon considering the material on record and submissions made by the adv. And applicant is fail to prove the justification for waving off obj. raised under sec. 11 trade Mark Act 1999."

5. With some effort, the court has been able to glean, from the impugned order, the grounds on which the Senior Examiner has rejected the appellant's application as

(i) phonetic similarity between the subject mark and Mark No. 2242763,

(ii) conceptual similarity between the subject mark and Mark No. 2242763,

(