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HIGH COURT OF MADRAS
Honourable Mr Justice P.B. BALAJI
Chennai Runners Association Rep by its President S – Appellant
Versus
The Trade Marks Registry – Respondent
Trademark - Trademarks Act 1999 - Sections 9, 11 - The court found the rejection of trademark applications unsustainable due to non-speaking orders not addressing user rights or grounds for refusal, remitting the matters for fresh consideration.
Fact of the Case:
The appellant sought to register the trademarks 'Chennai Runners', 'Chennai Marathon', and 'Chennai Half Marathon'. The Registrar rejected the applications based on Sections 9 and 11 of the Trade Marks Act, without a detailed discussion.
Finding of the Court:
The court concluded that the rejection orders were non-speaking and unsustainable, lacking discussion of the evidence provided by the appellant regarding user rights.
Issues: Whether the rejection of the trademark applications was justified under the provisions of the Trade Marks Act, given the lack of detailed reasoning.
Ratio Decidendi: A refusal of trademark registration must be supported by a detailed analysis of the application and the evidence on record, failing which such refusal may be deemed unsustainable.
Final Decision: The applications are remitted for fresh consideration by a different Controller within two months.
J U D G M E N T
These Appeals have been preferred by the appellant to set aside the impugned order of the second respondent made in orders having correspondence Nos.5767923, 5761492 & 5796302 in Class 41 dated 24.01.2018, 23.01.2018 & 31.01.2018 and direct the respondents to register the mark.
2. I have heard Mr.K.M.Aasim Shehzad, learned counsel for the Appellant and M.Sathyan, learned Additional Central Government Standing Counsel for the respondents in all the three Appeals.
3. The learned counsel for the Appellant would submit that the Appellant had applied the composite Trademarks viz., Chennai Runners, Chennai Marathon, Chennai Half Marathon. However, in and by the impugned orders dated 24.01.2018, 23.01.2018 & 31.01.2018, the second respondent has refused Registration on the ground that the Trademarks are objectionable under Sections 9 and 11 of the Trade Marks Act, 1999. The appellant sought for grounds for refusal, in respect of which responses were issued by the Registrar of Trademarks, in and by the communication dated 17.08.2018, where they have merely extracted the grounds for refusal of Registration, as (1)(b) and 11(1)(b) of the Trademarks Act, 1999. I find that the impugned orders of rejection are clearly unsustainable as being non speaking orders. There is absolutely no discussion whatsoever with regard to the several documents produced by the appellant showing user rights and the growth of the events which has been conducted by the appellant. The second respondent has therefore non suited the appellant without even discussing the primary ingredients of & 11 of the Act.
4. Therefore, these matters are being remitted to the respondents for fresh consideration, after affording a fair opportunity to the appellant. To avoid any embarrassment, the appellant's Applications shall be considered by a different Controller/Senior Examiner. The hearing shall be expedited and the Applications shall be disposed of within a period of two (2) months from the date of receipt of a copy of the judgment. No costs.
23.07.2024 Index : Yes/No Speaking/Non-speaking order rkp P.B.BALAJI,J.
rkp To
1.The Registrar of Trademarks, The Trademarks Registry, IP Office Building, G.S.T. Road, Guindy, Chennai 600 032.
2.The Senior Examiner of Trade Marks, Trademark Registry, IP Office Building, G.S.T. Road, Guindy, Chennai 600 032.
(T) CMA (TM) Nos.68, 69 & 70 of 2023
23.07.2024
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