A coined word starting with a common dictionary prefix is not deceptively or phonetically similar to another mark using the same prefix if the words are distinct and other similar marks coexist in the same class.

PRAYER

Appeal filed under Section 91 of the Trademarks Act, 1999 , praying to set aside the order dated 29.01.2025, passed by the 2nd Respondent refusing the registration of the trademark and consequently direct the Respondent to register the Trademark under No.4748228 in Class 28 by entering the same in the Register and thereby render justice.

ORDER

This appeal has been filed against the order passed by the 2nd respondent dated 29.01.2025, rejecting the application filed by the appellant for registration of the label mark SIXIT after allowing the opposition filed by the 1st respondent.

Heard the learned counsel for the appellant and the learned counsel appearing on behalf of the respondents.

The case of the appellant is that the appellant had coined the label mark and was using the same honestly and bonafidely from the year 2019 for sports goods. Apart from that, the appellant had registered the same mark with respect to other classes of goods in Class 25.

The applicant submitted an application as the proprietor of the trademark SIXIT for registration of the same in Class 28 in respect of games, toys and play things etc. The trademark was advertised in the journal and the 1st respondent submitted the opposition.

In the notice of opposition, the 1st respondent stated that they have been using the trademark for more than two decades, since 1997 and they have registered the trademark SIXER in various Classes including Classes 9, 18, 25, 28 and 35. They also took a stand that they are opposing the trademark of the appellant in Class 28. Accordingly, they sought for the rejection of the application.

The 2nd respondent through the impugned proceedings dated 29.01.2025, rejected the application by allowing the opposition on the ground that the adoption of the impugned mark by the appellant is questionable and it lacks bonafides, integrity and honesty. Apart from that, the 2nd respondent also held that the impugned mark is deceptively similar to the mark already registered in favour of the 1st respondent for the very same Class of goods viz., Class 28. Aggrieved by the order passed by the 2nd respondent, the present appeal has been filed before this Court.

When the appeal came up for hearing on 29.01.2026, this Court after hearing both sides, made a suggestion and asked the learned counsel for the appellant to take instructions from his client as to whether the appellant will be able to add any prefix or suffix to the impugned mark, so that the 1st respondent may not have any objections.

When the matter was taken up for hearing today, the learned counsel for the appellant, on instructions, submitted that the appellant has been using this mark from the year 2019 onwards and has gathered sufficient goodwill and reputation and that even if the appellant agrees for the change of the mark, the appellant will have to once again go through the process all over again. Therefore, the appellant is inclined to contest this case on merits. In the light of the above submission, this Court heard the learned counsel appearing on either side and carefully perused the materials available on record.

It is quite evident from the records that even though the 1st respondent was claiming to be the user of the mark SIXER from the year 1997, what was produced in terms of documents was only from the year 2010. Therefore, it can be safely taken that the 1st respondent was using the mark SIXER atleast from the year 2010 onwards. It is also not in dispute that the appellant started using the mark SIXIT from the year 2019. Hence, the 1st respondent is the prior user insofar as the mark SIXER is concerned.

In the light of the above finding, the next issue to be gone into is as to whether the findings of the 2nd respondent to the effect that there was no bonafides on the part of the appellant in adopting the mark SIXIT and that the mark adopted by the appellant is deceptively similar to