The assignment of trademark rights negates earlier objections to registration, provided the mark retains distinctiveness, and descriptive terms cannot be monopolized.

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. This is an appeal filed by the Appellant- Radico Khaitan Ltd. challenging the rejection of the trademark application No. 2387453, for the registration of the mark "EFKAY'S XXX RUM (Device)" in class 33. The mark sought to be registered by the Appellant is as under:

4. The Appellant is aggrieved by the order dated 22nd June, 2020 passed by the Senior Examiner by which the review petition filed by the Appellant has been dismissed. The said review petition was filed seeking review of the order dated 19th July, 2018 vide which the trade mark application of the Appellant bearing no. 2387453 for the registration of the mark "EFKAY'S XXX RUM (Device)" in class 33 was rejected.

5. The background of the case is that, the Appellant filed an application for the registration of the mark "EFKAY'S XXX RUM (Device)" dated 20th August, 2012. An examination report dated 12th December, 2013 was issued by the Trade Mark Registry. The report raised objections on relative grounds of refusal under Section 11 of the Trade Marks Act, 1999 (hereinafter, `Act'). In response to the aforesaid examination report, the Appellant filed its reply on 26th April, 2016. In the said reply, the Appellant relied upon an assignment deed wherein rights in the mark "EFKAY'S" stood assigned in favour of the Appellant by one M/s Yezdi Distilleries which were the original adopters and the owners of the mark "EFKAY'S". The said assignment deed dated 29th March, 2012 was also relied upon by the counsels for the Appellant at the time of hearing. A user affidavit was also filed by the Appellant claiming user in the device mark in question since April, 1987 through its predecessor. However, the mark was refused registration vide order dated 19th July, 2018 in the following terms:

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

6. The statement of reasons for the decision under Rule 36 (1) of the Trade Marks Rules, 2017 has been provided to the Appellant which states as under:

"With reference to the above and request on Form TM- M dated 07/08/2018. It has been decided by the Registrar of Trade Marks to inform you that hearing in respect of above application was held on 11/06/2018 and the said application is refused on the following Grounds;

* The applicant advocate Mr. Ankit Rastogi appeared. Filed reply and affidavit but supporting document (Assignment Deed and others) not filed. I have heard the argument and also perused the documents available on record. The same and similar mark is already on record, hence, objection under section 11 is sustained, application is refused for registration.

* 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.

Since the objection raised in the Examination Report under section 11 of the Trade Marks Act, 1999 as mentioned above cannot be waived and Ld. Counsel failed to convince at the time of hearing his case, the above mentioned application is refused."

7. Thus, the application was refused on the ground that the mark is identical/similar to earlier trade marks for the same or similar goods and services.

8. The Appellant sought review of the order dated 19th July, 2018. However, the said review petiti