The central legal point established in the judgment is the requirement of likelihood of confusion on the part of the public and the principle of comparing composite marks as a whole under Section 11(1) of the Trade Marks Act.

JUDGMENT (Oral)

C. Hari Shankar, J.

1. This appeal under Section 91 of the Trade Marks Act assails order dated 13th September 2022, passed by the Senior Examiner of Trade Marks in the office of the Trade Marks Registry, New Delhi, rejecting Application No. 4280126 submitted by the appellant for registration of the [IMG] mark, in Class 14, for 'Alarm clocks; bracelets; busts of precious metal; charms; clocks; earrings; jewellery; jewellery cases of precious metal; jewellery boxes not of precious metal; jewellery chains; decorative key fobs; key chains; key rings; lapel pins; neck chains; necklaces; necktie fasteners; nonmonetary coins; ornamental lapel pins; pendants; rings; stop watches; tie clips; tie fasteners; tie tacks; wall clocks; watch bands; watch cases; watch chains; watch straps; watches; wedding bands; wrist watches on proposed to be used basis'.

2. Consequent to submission of the aforesaid application by the appellant, the office of the trademark Registry issued First Examination Report (FER) dated 25th September 2019, objecting to the registration of the proposed mark under Section 11(1) of the Trade Marks Act, 1999, on the ground that it was deceptively similar to two earlier marks. The two marks which were cited were (i) [IMG], registered in favour of Mr. A. Shrivinasan and (ii) [IMG], registered in favour of Mr. Avathar Varatharajan.

3. Of these two marks, the former mark was not renewed and, accordingly, was deemed to be statutorily abandoned under Section 25(3) of the Trade Marks Act.

4. The appellant, in its reply dated 19th October 2019 to the FER, submitted that (i) the appellant's mark was phonetically and visually distinct from the cited [IMG] mark, (ii) the overall impression conveyed by the two marks was completely different and there was, therefore, no likelihood of confusion, (iii) Section 17 of the Trade Marks Act required the rival marks to be seen as a whole, without vivisecting the marks into their individual components, (iv) the goods in respect of which the cited [IMG] was registered were also different from the goods in respect of which the appellant sought registration of its [IMG] mark.

5. Mr. Prithvi Singh, learned Counsel for the appellant submits, moreover, that the goods in respect of which the registration of the appellant's mark was sought were essentially towards promotion of the movie AVATAR which was released in December 2022.

6. The Senior Examiner, by the impugned order dated 13th September 2022, rejected the aforesaid defence put up by the appellant and disallowed registration of the appellant's mark under Section 11(1)¹[11. Relative grounds for refusal of registration. -
(1) Save as provided in Section 12, a trade mark shall not be registered if, because of--
(a) its identity with an earlier trade mark and similarity of goods or services covered by the trade mark; or
(b) its similarity to an earlier trade mark and the identity or similarity of the goods or services covered by the trade mark,
there exists a likelihood of confusion on the part of the public, which includes the likelihood of association with the earlier trade mark.] of the Trade Marks Act on the ground that it was visually and phonetically similar to the cited [IMG] mark.

7. Aggrieved thereby, the appellant has approached this Court by means of the present appeal.

8. I have heard Mr. Prithvi Singh, learned Counsel for the appellant and Mr. Harish Vaidyanathan Shankar, learned Counsel for the respondent at some length.

9. The only ground on which registration of the [IMG] mark of the appellant has been refused, is that it is deceptively similar to the [IMG] mark registered in favour of Mr. Avathar Varatharajan and that the similarity was likely to result in confusion.

10. It is clear, from a bare reading of Section 11(1) that mere identity or similarity of the mark of which registration is sought, and the earlier mark, is not sufficient as a ground to reject the application seeking registration. Section 11(1