T.S. SIVAGNANAM, J.

1. The challenge in this Writ Petition is to an order passed by the Intellectual Property Appellate Board, (IPAB) in proceedings O.A.No.53/2008/TM/CH dated 19.3.2010, confirming the order passed by the second respondent, refusing the application of the petitioner for registration of a trade mark, under Sections 9 & 11 of the Trade Mark Act, 1999, (hereinafter referred to as the 'Act').

2. The facts of the case lie in a narrow campus. The petitioner filed an Application on 03.08.2005, before the second respondent for registration of a Trade Mark for different classes of goods under section 18 of the Act, for the mark of 'ECOLEAN' under classes 1,7, 16, 17,20 & 42. It appears that the said application was examined by the second respondent and objections for registration was raised under sections 9 and 11 of the Act. The petitioner filed their reply to the objections, the second respondent afforded an opportunity of personal hearing on 5.7.2007 and the second respondent by an order dated 6.2.2008, refused registration of the application under sections 9 & 11 of the Act. Against the said order, the petitioner preferred an appeal before the IPAB under section 91 of the Act. The Tribunal by order dated 19.03.2010, dismissed the appeal. Challenging the same, the petitioner is before this Court by way of this Writ Petition.

3. The learned counsel appearing for the petitioner submits that the second respondent failed to take note of the vital issue that the prefix of ‘ECO’ is common and the suffix of the subject trade mark is different from the suffix of the cited trademarks and that the second respondent ought to have taken note of the fact that the subject mark has been registered in Canada and has been registered in CTM on 8.12.1999, which is valid in all 25 member States of the European Community, including Great Britain.

4. The learned counsel further submitted that goods of the special mark is entirely different from the mark stated in the grounds of decision and the order passed by the second respondent is in violation of the principles of law and the provisions of the Act. The learned counsel would further contend that the second respondent erred in not allowing the application to be advertised and before receiving any objections erroneously rejected their claim. On merits, the learned counsel would submit that the Trade Mark ‘ECOLEAN’ is a coined word and it is part of the name of the company. That no finding has been given with regard to the objections under section 9 of the Act. That the order does not state under which sub-section of Section11 of the Act, the same is rejected. In support of his submissions, the learned counsel placed reliance on the decision of the Hon'ble Supreme Court in F.HOFFMANN-LA ROCHE &CO. LTD. Vs. GEOFFREY MANNER & CO. PVT. LTD. Reported in 1969 (2) SCC 716.

5. The learned counsel appearing for the second respondent by relying upon the counter affidavit would submit that opportunity was granted to the petitioner before the order was passed; principles of natural justice were followed and the second respondent being a formal party to this writ petition, do not wish to comment upon the impugned decision and would submit that the order passed by the second respondent is in accordance with the procedure. It is further stated in the counter affidavit that they would abide by the orders passed by this Court.

6. Heard the learned counsels for the parties and perused the materials available on record.

7. The petitioner filed a single application for registration of the Trade Mark for different classes of goods in Form TM-51 for the mark ‘ECOLEAN’. The application was made under:-

class 1:Plastic materials in the form of plastic raw material for industrial use;

class 7:Machines for the manufacture of packing materials, packages, packings etc; class 16:Plastic materials for packaging (not included in other classes) in the shape of rolls, etc;

class 17:Sealing and stuffing materials