The court held that existing trade mark registrations must be properly considered in evaluating new applications, impacting grounds for refusal based on laudatory nature and absence of evidence.

JUDGMENT

Prathiba M. Singh, J. (Oral)

1. This hearing has been done through hybrid mode.

2. The present appeal was filed before the IPAB and has been received by this Court, pursuant to the Tribunals Reforms Act, 2021.

3. The appeal under section 91 of the Trade Marks Act, 1999 (hereinafter `Act') challenges the impugned order dated 11th August, 2020 by which the review petition filed by the Appellant has been dismissed. The said petition was filed by the Appellant seeking review of the order dated 06th July, 2018 vide which the trade mark application of the Appellant bearing no. 2387450 for the registration of the mark "EFKAY'S FIVE STAR MYSORE BRANDY" in class 33 was rejected.

4. The said application was filed on 17th August, 2012. Following the application, the examination report was issued by the Registrar of Trademarks dated 12th August, 2013. The Appellant filed its reply to the examination report on the 30th April, 2015. Thereafter, the application was rejected by the Senior Examiner of Trade Marks vide order dated 06th July, 2018. The relevant order reads as under:

"The trade mark applied for is objectionable under section 9/11 of the Act. The application is accordingly refused."

5. A review petition was preferred by the Appellant against the said order. The same was dismissed vide the impugned order dated 11th August, 2020 in the following terms:

"An application for registration of trade mark consisting of word "EFKAY'S FIVE STAR MYSORE BRANDY" was filed by the aforesaid Applicant under application No 2387450 in respect of applied goods included in Class - 33. The application was examined and examination report containing the objections to the acceptance of application for registration of trade mark was communicated to the Applicant. On the request of the Applicant, a hearing was fixed in this matter. Eventually on 03 May 2018, the application came up before me for hearing and the order was passed accordingly.

The present petition on form TM-M has been filed for review of the order dated 06 July 2018.

SEC 11.SAME OBJECTIONS HENCE REFUSED DESCRIPTION GOODS/SERVICES ARE ON RECORD. OBJECTION U/S 11 OF THE ACT. EVIDENCE NOT PROPER.SECT 9(1) B OF THE ACT OBJECTION HENCE REFUSED. THE MARK IS LAUDATORY, OBJECTION UNDER SECTION 9(1) B OF THE ACT NO EVIDENCE FILED.

The request on form TM-M is accordingly Refused."

6. Thus, the application was refused on broadly three grounds which are-

7. Ld. counsel for the Appellant submits that the Appellant had also applied for registration of "EFKAY'S FIVE STAR MYSORE BRANDY" as a label mark. The said mark has already been granted vide registration no. 2387451 under class 33. The registered label is as under:

8. Ld. Counsel further submits that insofar as the mark "EFKAY'S" is concerned, the rights in respect of the same vest in the Appellant in view of the assignment deed dated 29th March, 2012. The relevant extract of the assignment deed is as under:

"The Assignor is the exclusive owner and proprietor in India, under the Trade Marks Act, 1999, of the following trademarks (hereinafter referred to as TRADEMARKS), brief particulars of which are given below:

*Efkays transfer and use by YEZDI to RADICO will be limited to Class 32 & 33 of the Trade marks Act.