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IN THE HIGH COURT OF DELHI
Prathiba M. Singh, J.
Essential Export Sociedad Anonima - Appellant
Versus
Registrar of Trade Marks - Respondent
C.A. (COMM.IPD-TM) 131 of 2022
Decided On : 20-07-2022
The court emphasized the necessity of considering the status of previously cited marks when assessing trademark applications under Section 11 of the Trade Marks Act, ensuring a fair and informed examination process.
Headnote:(A) Trade Marks Act, 1999 - Section 11 - Trademark application rejection - The appellant's application for registration of the mark 'TOTTO' was rejected citing objections under Section 11 due to similarity with existing marks - The court found that the Registrar failed to consider important factors related to the status of cited marks prior to rejection (Paras 4, 6, 8).
(B) Remand for reconsideration - The court remanded the matter for fresh examination of the trademark application, emphasizing that prior statuses of cited marks should be appropriately considered (Paras 9, 10).
Facts of the case:
The Appellant filed for trademark registration of 'TOTTO' after its international use began in 1989 and national use since 2007, but faced objections based on already existing marks similar in nature.
Findings of Court:
The Court determined that the Examiner of Trademarks should reassess the application taking into account the statuses and opposition of previously cited marks.
Issues: The primary issue was whether the Examiner properly considered all relevant facts before rejecting the application.
Ratio Decidendi: The Court ruled that the overall status of cited marks must be considered comprehensively, ensuring fairness in trademark registrations.
Result: Appeal allowed and application remanded for re-examination.
| Table of Content |
|---|
| 1. details of trademark application and objections. (Para 1 , 2 , 3 , 4) |
| 2. arguments regarding the consideration of cited marks. (Para 5) |
| 3. court's review of the status of cited marks. (Para 6 , 7 , 8) |
| 4. order to set aside the impugned decision. (Para 9 , 10) |
| 5. final conclusion and directions. (Para 11 , 12) |
JUDGMENT
Prathiba M. Singh, J. (Oral)--The present appeal has been filed challenging the impugned order dated 30th March, 2021, by which the multi-class trademark application bearing no. 3639686 for the mark `TOTTO', has been rejected by the Registrar of Trade Marks. The Appellant, Essential Export Sociedad Anonima, a Costa Rica based company, filed an application for registration of the mark `TOTTO' on 20th September, 2017. Ld. Counsel for the Appellant submits that the Appellant adopted the mark internationally in 1989, and in India since 2007.
2. An examination report was issued on 26th October, 2017, citing various similar marks and raising an objection under Section 11 of the Trade Marks Act, 1999 (hereinafter "the Act"). There are six cited marks out of which five relate to the mark "TOTO" and one relates to the mark "TOTTO". The details of the cited marks as given in the examination report are extracted hereinbelow:
3. In response to the examination report dated 18th December, 2017, the Counsel for the Appellant gave the status of the various cited marks in the examination report, and argued that the Applicant's mark deserves to proceed for registration. As per the response to the examination report, application nos. 2647511 and 2809076 in class 18 have been opposed, application no. 1111587 in class 25 is deemed to have been removed from the register, application no. 1323215 in class 25 is in respect of different description of services, and application nos. 3016329 and 3079933 in class 25 are pending.
4. However, vide the impugned order, the Examiner of Trademarks has rejected the application on the ground that two applications, nos. 2647511 and 2809076, are for similar marks for similar goods and services. Hence, the Section 11 of the Act objection has been upheld.
5. Ms. Kajal Arora, ld. Counsel for the Appellant submits that the Registrar of Trademarks has failed to consider the fact that the two marks bearing nos. 2647511 and 2809067, which are cited against the Appellant, have already been opposed by the Appellant. Further, as mentioned above, other marks have been either removed or are still pending registration. Thus, these facts deserve to be considered before the mark of the Appellant can be rejected.
6. Heard. The Court has perused the record and finds the status of all the cited marks is as under:
| S.No. | Marks | Status |
| 1 | 2647511 | Opposed by Appellant |
| 2 | 2809076 | Opposed by Appellant |
| 3 | 1111587 | Removed |
| 4 | 3016329 | Abandoned |
| 5 | 3079933 | Abandoned |
| 6 | 1323215 | Registered in Class 7 |
7. Insofar as the last mark, no. 1323215 is concerned, the said mark is registered but the services for which the mark is in use are different from the goods and services in respect of which the Appellant seeks registration.
8. In the overall facts, this Court is of the opinion that the Examiner ought to consider the above facts and status of the cited marks, and then take a fresh look at the trademark application of the Appellant.
9. The impugned order dated 30th March, 2021 is, accordingly, set aside.
10. The application is remanded for re-examining by the Examiner of Trademarks, and the examination shall be conducted in accordance with law within 6 months.
11. The appeal is allowed in the above terms.
12. Let the present order be intimated to the Registrar of Trade Marks through ld. CGSC, Mr. Harish V. Shankar, for necessary action.
