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IN THE HIGH COURT OF DELHI
Prathiba M. Singh, J.
Subros Educational Society - Appellant
Versus
Union of India - Respondent
C.A.(COMM.IPD-TM) 2 of 2021
Decided On : 19-05-2022
Important Points
Subject
Intellectual Property - Trademark Law
Headnote
(B) Trademark registration - The presence of similar marks in the Register is a significant factor in deciding the registrability of a new mark. (Para 2)
Facts of the case:
The Apellant challenged a trademark refusal dated 15th February, 2019 against the mark 'SBS World School', which was deemed similar to existing marks registered for 'SBS' educational services.
Findings of Court:
The court held that the Registrar failed to properly consider the existing registrations granted to the Appellant and remanded the matter for fresh consideration.
Issues: Whether the refusal to register the mark 'SBS World School' was appropriate considering existing 'SBS' registrations of the Appellant.
Ratio Decidendi: The court reasoned that the Registrar's failure to consider prior registrations warranted remand, ensuring the examination was comprehensive and aligned with existing marks.
Result: Appeal allowed and remanded for reconsideration.
| Table of Content |
|---|
| 1. registration denial for similar marks. (Para 2 , 3) |
| 2. existing s.b.s marks and expansion intention. (Para 4 , 5) |
| 3. order set aside; re-evaluation mandated. (Para 6 , 7) |
| 4. appeal allowed and matter disposed. (Para 8 , 9) |
JUDGMENT
Prathiba M. Singh, J. (Oral)
1. This hearing has been done through hybrid mode.
2. The Appellant - M/S. SUBROS EDUCATIONAL SOCIETY has filed the present appeal challenging the impugned order dated 15th February, 2019 passed by the Senior Examiner, Registrar of Trademarks, New Delhi by which the mark `SBS World School' has been refused registration. The mark has been refused registration under Section 11(1)(a) and 11(1)(b) of the Trademarks Act, 1999 on the ground of similar marks, which are existing in the Register. The operative portion of the order dated 15th February, 2019 is set out below:
"With reference to the above and request on Form TM-M dated 09/02/2019. It has been decided by the Registrar of Trademarks to inform you that hearing in respect of above application was held on 26/12/2018 and the said application is refused on the following Grounds:
* The applicant advocate Ranjan Jha appeared. 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."
3. The details of the trademark Application bearing No.2891476 in Class 41 relating to the mark "SBS World School" is set out below:
4. The Appellant has also obtained registrations for several similar marks consisting of the mark `SBS', in Class 41 for educational services, such as,
5. It is submitted by ld counsel that the Appellant intends to expand into other fields of educational services, and has thus applied for the mark "SBS World School".
6. The impugned order passed by the Registrar of Trademarks has not properly considered the registrations for the various `SBS' marks already granted in favour of the Appellant. Accordingly, the impugned order dated 15th February, 2019 is set aside and the matter is remanded back for re-consideration by the Respondent - Registrar of Trade Marks.
7. The Examiner shall offer a hearing to the Appellant and consider afresh the Trademark Application bearing No. 2891476, in view of the above mentioned registrations of the Appellant in Class 41. Thereafter, the Examiner shall pass orders, in accordance with law, within a period of four months.
8. Let the present order be supplied to the Registrar of Trademarks, New Delhi, through Mr. Harish Vaidyanathan Shankar, ld. CGSC.
9. The present appeal is allowed and disposed of in the above terms. All pending applications are also disposed of.
