The finding of the subject mark not being registered should be supported by cogent reasons: Bombay High Court reprimands Registrar of Trademarks

The finding of the subject mark not being registered should be supported by cogent reasons: Bombay High Court reprimands Registrar of Trademarks

The Bombay High Court while reprimanding the Registrar of Trademarks and the Senior Examiner for denying registration of trademark without considering submissions and documents relied upon by the applicant, remarked it to be ‘complete abdication’ of their quasi-judicial functions.

The single judge Justice Riyaz Chagla set aside an order of the Senior Examiner of Trade Mark’s refusing registration in one such case and remanded the matter back for fresh consideration. The Court directed him to consider the applicant’s submissions and pass a reasoned order.

The Court was hearing an appeal filed by the applicant/petitioner- ‘I Am Ocean LLC’ which sought to set aside the order rejecting its trademark application by the Registrar of Trademark. The order was passed in August 2021. The application was rejected on the grounds that it was similar to another mark.

The petitioner upon receiving the said order called upon the Senior Examiner of Trade Marks to furnish reasons as the said order was an un-reasoned order. However, the Senior Examiner rejected the application on similar grounds that it was identical or similar having similar goods/services.

The petitioner then approached the High Court seeking to set aside the order of the Registrar of Trademark.

Advocate Hiren Kamod appearing for the petitioner argued that the order was nothing but a replica of the said order passed by the Registrar and that the same observations were recorded to arrive at the conclusion that the subject mark applied for is not registrable.

He further submitted that there were detailed submissions made by the petitioner and the petitioner had made out a case as to the subject mark having distinctiveness. It was submitted that several authorities were relied upon in support of the petitioner’s case, including the fact that the subject mark had been granted registration in the European Union and New York.

Advocate Shreyas Deshpande appearing for the Registrar of Trademark argued that there were reasons in the order that the mark is identical/similar having similar goods/services and the same is likely to cause confusion among the public/consumers and therefore the same is not registrable. He argued that the order passed was a reasoned order.

The Court agreed with the submissions of the petitioner and observed that, “There are submissions on the subject mark being required to be viewed in its entirety and for which the aforementioned decisions have been relied upon by the Petitioner. There are submissions that the subject mark is unique and coined device. The words “I AM” is surrounded by a cursive letter “O” which has a stroke extending to the right that ends with two wave crests. This appears to have been put forward after much thought and deliberation by the Petitioner and which produces the impression of a distinctive trade mark.”

Therefore, the Court held that the subject mark should be viewed in its entirety.

The Court remarked that there was no independent application of mind on the part of the Senior Examiner of Trade Marks to the Reply submissions canvassed by the Petitioner and thus the impugned order cannot be stated to be a reasoned order as contended on behalf of the Respondent. The finding of the subject mark not being registered should have been supported by cogent reasons which the impugned, stated the judge.

The Court further noted that in a series of matters before the High Court, although submission and documents were submitted by the applicants, the same were not being considered.

“It has been observed by this Court in a series of matters which have come up that although there have been submissions and documents in support of the Petitioner’s case for registration of the Trade Marks in the replies which have been filed before the Registrar of Trade Marks, these are not being considered. The replies are drafted with application of mind,” the court noted.

Accordingly, the Court set aside the Senior Examiner of Trade Marks order and remanded the matter back for reconsideration.