IMPORTANT POINT
The commercial impression of a composite trademark is created by the mark as a whole, not by its component parts. The word 'PREMIER' was commonly used in conjunction with sporting leagues and had acquired extensive use, making it an intrinsically weak trademark.

JUDGMENT

Anish Dayal, J. - This appeal has been filed under Section 91 of the Trade Marks Act, 1999 ("the said Act") read with Rule 156 of the Trade Mark Rules, 2017 ("the said Rules") assailing order dated 02nd February, 2023 passed by the Registrar of Trademarks, Delhi ("respondent No. 2"), rejecting the opposition of Premier SPG and WVG Mills Pvt. Ltd ("the appellant") to registration of the PREMIER respondent's mark in class 25 (clothing; footwear; headgear).

2. The respondent had filed application No. 1489060 for registration of the said mark claiming "proposed to be used". The said mark was advertised for acceptance in the trademark journal on 18th May, 2015. The application was opposed by the appellant through opposition No. 837232 on 07th September, 2015 on the ground that the mark was phonetically, visually, structurally and deceptively similar to the appellant's mark 'PREMIER' which was conceived, coined and adopted in 1949, and registered in various classes from 1980 onwards.

3. The appellant claims that they are part of the Premier Group having an international reputation for quality goods in the clothing industry built over the last 70 years. They are manufacturers, exporters, marketers of yarn, clothing, hosiery including suiting, shirts, ready-made garments, dhotis, textiles under various marks etc. The product portfolio of the appellant comprises of these ranges of products and the following device marks are house marks of the

4. The details of the registration are tabulated as under:

5. It is claimed that the appellant's house mark 'PREMIER' and other 'PREMIER' formative marks have been in continuous and extensive use in India. The mark was coined and adopted in the year 1991 and has been in open and continuous use since then.

6. The respondent claimed in his counter statement that they are headquartered in London and are the organizing body of 'Barclays Premier League' and control the rights of the League including its rules, broadcast, and commercial rights. It is a private company wholly owned by 20 member clubs who make up the League. Each individual club is independent but working within the rules of football as defined by the Premier League. In connection with this business, the respondent owns and uses the distinctive trademarks and other variants (hereinafter collectively referred to as the 'Premier League Marks').

7. It was stated that the respondent has invested years of time, capital, effort and resources to attain immeasurable fame and goodwill with the Premier League Marks. The Premier League Marks are marketed, advertised, and extensively promoted and have therefore achieved recognition amongst members of the trade and common consumers in public.

8. The Premier League Marks have secured registration in various countries of the world. Some details are tabulated by the respondent as under:

9. In India, the respondent is the registered proprietor of the 'BARCLAYS PREMIER LEAGUE' mark . The said mark was advertised in Journal No. 1449 dated 13th September 2010. Pursuant to an arrangement with Barclays Bank, the earlier sponsor of the league, the respondent continued to use his device mark 'PREMIER LEAGUE' without the word 'BARCLAYS' which continues to be distinctive, different, and highly stylized.

10. In support of the appeal, counsel for the appellant contended that the Registrar of Trademarks erred in his conclusion that "it is palpable that there is no similarity between the marks phonetic, visual, or structural. The only common features between the two marks is the word 'PREMIER ', and the said word 'PREMIER' is generic word and no one can have a monopoly over the said word, nor can claim exclusivity on it. "

11. Counsel for the appellant submitted that firstly, the finding in the impugned order was beyond the pleadings, since the respondent had not filed any evidence with regard to extensive use of the mark 'PREMIER' by other entities, which could have led the Registrar to the conclusion as above; second