A composite trademark should be evaluated in its entirety, as dissection can overlook its distinctive commercial identity.

JUDGMENT :

SAURABH BANERJEE, J.

Preface:

1. The appellant, by the present appeal under Section 91 of the TRADE MARKS ACT , 1999[Hereinafter referred as “the Act] read with Section 151 of the Code of Civil Procedure, 1908 and read with Section 13 of the Commercial Courts Act, 2015, seeks to assail the impugned order dated 17.10.2023 passed by the learned Examiner of Trade Marks, Trade Mark Registry, New Delhi, [Hereinafter referred as “impugned order], whereby its application no.4804262 for the registration of mark “CROSSRELIEF” in Class 5 of the Act has been rejected.

Brief Factual Matrix:

2. The appellant is a company incorporated under the Indian Companies Act, 2013 and is a subsidiary of Mankind Pharma Limited, the fifth-largest pharmaceutical company in India.

3. The appellant, on 02.01.2021, applied for registration of the mark “CROSSRELIEF” (word) in Class 5 of the Act on a ‘proposed to be used basis. The respondent, on 13.01.2021, issued an Examination Report raising an objection under Section 11(1) of the Act to the effect that “…the mark is identical with or similar to earlier marks in respect of identical or similar description of goods and because of such identity or similarity there exists a likelihood of confusion on the part of the public. Hence, the above application is liable to be refused...” and cited the following trademarks:-

4. Thereafter, the respondent passed the impugned order dated 17.10.2023, relevant portions thereof are reproduced under:-

“…The rights conferred by registration of trademark is subject to the rights of the prior application/prior user of the marks. The mark taken in its entirety is significantly identical with and/or deceptively similar to the cited marks. Also the goods/services in respect of which the applicant is seeking registration are the goods/services of same description as those of the cited marks. Therefore the balance of convenience is clearly in favor of the cited marks. Hence the Objections:

The mark applied for registration is identical with/similar to earlier trademarks on record, as mentioned in the Examination report and by similarity of marks as well as similarity of goods and services covered under such marks, there exists a likelihood of confusion in the mind of public. As such the registration of the mark is objectionable under Section 11(1) of the TRADE MARKS ACT 1999 After perusal of all the documents on record and submission made by the applicant/ authorised agent, it is concluded that applied mark is not registrable because of the reason stated as above. Hence application no 4804262 cannot be accepted and refused accordingly.”

5. Aggrieved thereby, the appellant has preferred the present appeal.

Position qua the Respondent

6. The respondent, despite being duly served has neither filed a reply despite being granted repeated opportunities. As such, the right to file a reply of the respondent is closed.

7. This Court is thus, proceeding to hear the arguments of learned counsel for the appellant on merits.

Submissions of the Appellant

8. Based on the pleadings, Mr. Hemant Daswani, learned counsel for the appellant submitted that the appellant has honestly adopted and coined mark “CROSSRELIEF” in course of trade and that the same possesses several unique features rendering it highly and inherently distinctive.

9. Learned counsel submitted that the mark “CROSSRELIEF” of the appellant is a portmanteau of two terms: ‘CROSS’, a word commonly used in medical industry to signify medical aid, and ‘RELIEF’. Therefore, as per him, there can be no monopoly and/ or exclusivity over the