JUDGMENT

TEJAS KARIA, J

1. The present Appeal has been filed under Section 91 of the Trade Marks Act, 1999 (“Act”), being aggrieved by the order dated 06.11.2024 (“Impugned Order”) passed by the Respondent, refusing the Appellant's Application for registration of the Mark ‘PETKIND’ (“Subject Trade Mark”) bearing Application No. 5157443 (“Application”) in Class 31.

2. The Respondent has refused the Application on the ground that there was a prior application for the mark ‘PETKIND’ (“Cited Mark”) under Application No. 4648505, which is phonetically and visually similar to the Subject Trade Mark and in respect of similar goods and services and under the same Class. Therefore, the Application was refused vide Impugned Order with the finding that the Subject Trade Mark is not registrable pursuant to Sections 9(1)(a), 9(1)(b) and 11(1) of the Act.

FACTUAL BACKGROUND:

3. The Appellant is a leading marketer of wide range of pharmaceutical, medicinal and veterinary preparations in India and is one of the largest pharmaceutical companies of India.

4. On 01.10.2021, the Appellant had applied for registration of the Subject Trade Mark by way of Application for agricultural, horticultural, aquacultural, forestry products, grains and by-products of the processing of cereals for human or animal consumption namely wheat, barley, sorghum, millet, living animals, fresh fruits and vegetables, seeds, raw and unprocessed grains and seeds, natural plants and flowers, foodstuffs for animals, malt goods.

5. The Respondent after examining the Application issued an Examination Report dated 27.10.2021 (“Examination Report”). The Examination Report stated that the Application is open to objection on relative grounds of refusal under Section 11(1) of the Act because the same or similar marks are already on record of the Register for the same or similar goods or services. As per the Examination Report, the objection was raised under Section 11(1) of the Act, as the Subject Trade Mark was identical with or similar to earlier application for Cited Mark and because of such identical or similar Mark, there existed a likelihood of confusion on the part of the public.

6. The Respondent held a hearing of the Application for registration of the Subject Trade Mark on 06.11.2024. The Counsel for the Appellant appeared at the hearing and made submissions in favour of the registration of the Subject Trade Mark.

7. The Application for the registration of the Subject Trade Mark was rejected vide the Impugned Order and being aggrieved by the same, the Appellant has filed the present Appeal before this Court, on the grounds that the decision is arbitrary, legally flawed, and contrary to the basic principles governing Trade Mark examination.

SUBMISSIONS ON BEHALF OF THE APPELLANT:

8. The learned Counsel for the Appellant made the following submissions:

8.1 The Appellant has over 280 registered Trade Marks, out of which 210 Marks are registered in Class 5, wherein the word ‘KIND’ forms part of the essential feature of their Trade Marks (“KIND Family of Marks”). The annual turnover in respect of top twenty-five different products of the Appellant containing the word element ‘KIND’ as a part of its Trade Mark cumulatively is over ₹25,53,00,00,000/- for the Financial Year (“FY”) 2022-2023.

8.2 The Mark ‘MANKIND’ belonging to the Appellant has been determined under Rule 124 of the Trade Marks Rules, 2017 as a well-known Trade Mark by the Registrar of Trade Marks and has been published in the Trade Marks Journal No. 1978 dated 14.12.2020 as a well-known Mark and included in the list of well-known Trade Marks maintained by the Registrar of Trade Marks.

8.3 The Appellant has honestly adopted and coined the Subject Trade Mark having many unique features, which makes the mark highly and inherently distinctive in respect of the goods being sold under the Subject Trade Mark. The Subject Trade Mark is a combination dictionary word with the source identi