The court emphasized the necessity for thorough examination of prior trademarks' usage when assessing likelihood of confusion under trademark law.

JUDGMENT :

Senthilkumar Ramamoorthy, J.

This appeal is directed against order dated 04.07.2024 rejecting Trade Mark Application No.5374731 for the registration of the word mark “METAMORPH”. The appellant applied for the registration of the above mentioned mark on 17.03.2022 on “proposed to be used” basis in relation to pesticides, insecticides, weedicides, fungicides, biocides and herbicides. By examination report dated 19.05.2022, objections were raised on relative grounds by citing three marks. The appellant replied to the examination report on 17.06.2022 and asserted that the trade mark of the appellant is distinguishable from the cited marks and that there would be no likelihood of confusion among the public. The appellant also filed written submissions. The impugned order was issued in these facts and circumstances.

2. Learned counsel for the appellant referred to the above sequence of dates and events and pointed out that the appellant stated in the written submissions that the third cited mark (Trade Mark No.5084050) is not being applied in relation to pesticides, insecticides, weedicides, fungicides, biocides and herbicides. She further submitted that it is stated therein that it was being used in relation to medicines and that the products to which it was being applied are no longer available. Learned counsel also submitted that the appellant had provided evidence of use of the trade mark in relation to the above mentioned products. By referring to the impugned order, learned counsel submits that the contentions of the appellant were disregarded and that it was erroneously recorded that the cited mark “metamorph i” was being used for a long time in comparison to the appellant's mark. By pointing out that the mark cited in the impugned order was applied for on proposed to be used basis on 11.08.2021, and that the appellant applied shortly thereafter on 17.03.2022, learned counsel also submits that the appellant is entitled to the registration of the mark as an honest and concurrent user or on account of special circumstances.

3. Learned counsel for the respondent refuted these contentions by pointing out that the mark cited in the impugned order is currently registered. He further submits that the registration is in the same class (Class 5) and that the description of the goods in relation to which the mark is registered covers preparations for destroying vermin, fungicides and herbicides. Therefore, he contends that no interference is warranted with the impugned order.

4. In the impugned order, after recording that the mark “metamorph i”was registered under Trade Mark No.5084050, the respondent has recorded, in relevant part, as under:

“The cited mark is being used since long back in comparison to the subject applied mark. In view of such similarities between the nature of the marks and their applied specification of goods/services, there exists a strong likelihood of confusions on the part of the consumers, as they are likely to assume and confuse that the applicant's specification of goods/services are connected or otherwise associated with the conflicting marks. The consumers may be under the mistaken belief that the applicant's goods/services originate from the conflicting cited mark or that they have some trade connection or affiliation.

Present mark is phonetically and visually similar to the conflicting mark which is mentioned in the examination search report and also the cited mark is well in prior use in respect of the similar nature of goods/services which sought by the applicant. The applicant is the subsequent user by filing of application date among the conflicting mark application f