The central legal point established in the judgment is the significance of distinctiveness and acquired reputation in trademark registration under the Trade Marks Act, 1999.

JUDGMENT

Amit Bansal, J. (Oral)

1. The present appeal has been filed impugning the order dated 29th May, 2018 passed by the Senior Examiner of Trade Marks in respect of Application No. 2420117 for the word mark "MIRACLES" in class 44.

2. Brief facts necessary for adjudication of the present appeal are as under:

2.1. The appellant is a company engaged in the business of offering medical, hospital and allied services under the word mark "MIRACLES" since 2012.

2.2. On 31st October, 2012, the appellant applied for registration of the word mark "MIRACLES" under class 44 vide Application No. 2420117.

2.3. Vide Examination Report dated 2nd September, 2013, the Trade Marks Registry objected to the registration of the word mark "MIRACLES" under class 44, citing prior subsisting registrations of trademarks which were similar to the mark of the appellant.

2.4. In response to the Examination Report, the appellant stated that the word mark of the appellant should be registered since it is distinctive in nature. Further, it was stated that since the mark had been continuously used by the appellant since 2012, the customers of the appellant were easily able to differentiate between products of the appellant and those of others, thereby eliminating any possibility of confusion in the market.

2.5. However, the trademark application of the appellant, seeking registration of the word mark "MIRACLES" under class 44, was subsequently rejected by the Trade Marks Registry vide the impugned order.

2.6. Consequently, the appellant filed a request on Form TM-M under Rules 36(1) of the Trade Marks Rules, 2017 for obtaining from the Registrar the grounds taken in rejecting the Trade Mark Application of the appellant.

2.7. On 29th June, 2018, the appellant was issued the Statement of Grounds of decision, which cited Sections 9(1)(a), 9(1)(b), 11(1)(a) and 11(1)(b) of the Trade Marks Act, 1999 as the grounds for refusal of the registration application of the appellant.

2.8. Accordingly, the appellant has been constrained to file the present appeal.

3. At the outset, reference may be made to the relevant extract of the Statement of Grounds of Decision dated 29th June, 2018, which is as under:

" With reference to the above and request on Form TM M dated 25/06/2018. It has been decided by the Registrar of Trade Marks to inform you that hearing in respect of above application was held on 16/05/2018 and the said application is refused on the following Grounds;

* 9 -Absolute grounds for refusal of registration.

* 9(1)(a) -The trade mark is devoid of any distinctive character, that is to say, not capable of distinguishing the goods or services of one person from those of another person.

* 9(1)(b) -The Trade Mark consist exclusively of marks or indications which serve in trade to designate the kind, quality, quantity, intended purpose, values, geographical origin or the time of production of the goods or rendering of the service or other characteristics of the goods or services.

* 11(1)(a) -Relative grounds for refusal of registration.The said trade Mark is refused for registration because of its identity with an earlier trade mark and similarity of goods or services covered by the trade mark; or

* 11(1)(b) -Relative grounds for refusal of registration. The said trade Mark is refused for registration because of 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.

Application was examined and objections were raised under section 11 of Trade Marks Act, 1999. Reply filed, perused but found not satisfactory. Application proceeded for show cause hearing. Supporting documents in support of the claim of user did not filed by the applicant. Other similar valid marks are already on record. The objections raised in the Examination Report under sectio11 of the Trade Marks Ac