A trade mark application can proceed for advertisement as 'proposed to be used' despite initial user evidence claims being unproven, provided objections regarding similarity are evaluated appropriately.

JUDGMENT

Navin Chawla, J. (Oral)

1. This appeal has been filed by the appellant challenging the order dated 02.04.2019 passed by the Senior Examiner of Trade Marks, rejecting the application no. 2640851 of the appellant seeking registration of its mark "BRAZZERS" in Class 35.

2. The appellant had filed the above application seeking registration of the trade mark "BRAZZERS" in Class 35 in respect of "on-line retail store services featuring clothing, mobile phone cases, golf balls, key chains, and mugs". The Registrar of Trade Marks issued an Examination Report dated 25.02.2015 raising an objection under Section 11 of the Trade Marks Act, 1999 (hereinafter referred to as the `Act') on ground of similar trade marks being already on record in the Register for the same or similar goods or services. The marks cited against the appellant were as under:

3. The appellant filed a reply to the Examination Report under cover of its letter dated 30.01.2016.

4. The application of the appellant was, however rejected vide an order dated 02.04.2019 passed by the Senior Examiner of Trade Marks, holding the mark applied to be objectionable under Section 9/11 of the Act.

5. The appellant applied for Statement of Grounds of Decision under Rule 36(1) of the Trade Marks Rules, 2017, which were provided to it vide order dated 01.05.2019, stating as under:

"The application for the registration of the mark had been filed on 11/12/2013, claiming user of the same since 11/08/2012. The fact that the impugned mark is being filed with the use since the year 2012 is of no help to the applicant in this case whereas the user document filed alongwith the affidavit does not validate the claimed user show from the goods of year 2012 as claimed in the application and not compliance of Rule 25.

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Identical and/or similar prior trade mark no. 1111261, 1171073, 2123322 & 2312625 is already on Register of Trade Marks. As such the Application no- 2640851 in class 35 is hit by objections under Section 11 (1) of the Act and, therefore, application is refused for registration. Reliance in this concern is placed upon the judgment of Hon'ble Delhi High Court reported at 2012 (50) PTC 433 (Del.) (DB), wherein in paragraph 26, it was held that once a mark is registered a label mark then it cannot be said that work contain therein is not registered. Therefore, identical and/or similar of the earlier mark registered under no. 1111261 1171073, 2123322 & 2312625, is worthy of protection even if the manner is somewhat different."

6. The learned counsel for the appellant submits that the Senior Examiner of Trade Marks has erred in law in dismissing the application of the appellant on account of the appellant not being able to prove its user of the mark since 2012. He submits that, in case the Senior Examiner of Trade Marks was of such a view, it should have granted to the appellant an opportunity to amend the user as "proposed to be used" or of any other date, however, the application should not have been rejected on this ground.

7. As far as the cited marks are concerned, the learned counsel for the appellant submits that the cited marks under application nos. 1111261, 1171073 and 2123322 were for different Class of goods and, therefore, not relevant to the application of the appellant. As far as the cited mark under application no. 2312625 is concerned, though the same was for the same Class as the one applied for by the appellant, the services covered therein were different. He submits that, on enquiry, it was found that the applicant therein was, in fact, engaged in the business of manufactur