A trademark must be assessed as a whole, and objections based on deceptive similarity are invalid if the overall impression is distinctive.

JUDGMENT

% 23.10.2024 MINI PUSHKARNA, J:

1. The present appeal has been filed under Section 91 of the Trade Marks Act, 1999 (“the Act”) challenging the order dated 25th January, 2019 passed by the respondent, wherein, the application of the appellant for registration of trademark „Planet E School‟, vide application no. 2878088, under Class 41, for providing educational services, was dismissed.

2.1 Learned counsel appearing for the appellant submits that the trademark of the appellant is entirely different from the cited marks, and the same is neither identical nor deceptively similar to other cited marks. The mark of the appellant is different visually, phonetically and structurally, from the other cited marks.

2.2 It is submitted that the appellant is an honest and bona fide user of the mark. The trademark applied for registration by the appellant, stands distinctive from other marks, as it has to be considered as a whole. Section 17 of the Act entitles registration of a trademark comprising of several features, even if the matter forming part of such several features, stand registered in the name of an earlier proprietor.

2.3 The appellant is agreeable to restrict its registration only to the State of Punjab.

3.1 Per contra, learned counsel appearing for the respondent submits that there are other registrations with the mark „Planet‟, which already exist. He submits that there are valid and existing registered marks, which have been cited against the appellant. One of the cited marks is also with respect to one of the educational services, so there is a clear case of confusion, if the mark of the appellant is allowed to be registered. The cited marks are identical/ similar to the goods of the impugned trademark.

3.2 Section 9(1)(A) of the Act, prohibits registration of trademarks which are devoid of any distinctive character, i.e., not capable of distinguishing the goods or services of one person from those of another person. The appellant has failed to establish secondary meaning, as per proviso of Section 9(1) of the Act before the Trademark Registry.

3.3 In the present case, the refused trademark is a word mark. The conflicting marks are all device marks, which are the element of the refused trademark. Refused trademark cannot be allowed to be registered, for the said registration will give an undue advantage to the appellant, along with the right to sue the conflicting marks.

4. Having heard learned counsel for the parties, at the outset, this Court notes the impugned order dated 25th January, 2019, wherein, the application of the appellant for registration of the trademark in question has been Signature Not Verified Digitally Signed C.A.(COMM.IPD-TM) 121/2021 Page 2 of 9 rejected, as follows:

“xxx xxx xxx

The trade mark applied for is objectionable under Section 9/11 of the Act. The application is accordingly refused.

xxx xxx xxx”

5. Perusal of the aforesaid order shows that the application of the appellant for trademark registration has been rejected by a one line order that the trademark applied for, is objectionable under Section 9 and 11 of the Act. No detailed reasons have been given by the respondent for rejecting the application of the appellant. The comprehensive reply filed by the appellant before the Trademark Registry in response to the First Examination Report (“FER”), has not even been considered, or discussed in the impugned order.

6. The conflicting marks, cited by the Trademark Registry, are as follows:

7. Considering the aforesaid table, it is evident that the common word amongst the cited marks and the mark sought to be registered by the appellant, is „Planet‟ and „E‟. There are several marks that have already been registered containing the word „Planet‟. However, if the cited marks are viewed as a whole and compared with the mark of the appellant, the marks cited by the Trademark Registry cannot be said to be similar or deceptively similar to the mark of the appellant. The trademark applied for by the appellant f