Registration of a trademark may be refused if similar existing marks are present unless prior registrations are adequately considered.

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,

• SBS Institute bearing No.2891479,
• SBS University bearing No.2891481,
• SBS College bearing No.2891483,
• SBS International School bearing No.2891485 and
• SBS International School bearing No.2891487

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.