The Bombay High Court recently criticized the Registrar of Trademarks and the Senior Examiner for disregarding the submissions and documents presented by an applicant seeking trademark registration in the case of I Am The Ocean, LLC vs Registrar of Trade Marks.
Justice RI Chagla noted that in several similar cases brought before the Court, despite the existence of submissions and supporting documents in favor of the petitioner’s trademark registration, they were not being taken into consideration.
” 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 stated.
The Court was addressing a petition filed by I Am The Ocean, LLC, which sought to overturn an order issued by the Examiner of Trade Marks at the Trade Marks Registry in Mumbai on August 23, 2021.
The Trade Marks Registry rejected the petitioner’s application for trademark registration, citing similarity to another mark. The petitioners then requested the Senior Examiner to provide reasons for the rejection, as the initial order did not contain any. However, the Senior Examiner issued an order identical to the previous one. Consequently, the petitioners approached the High Court.
During the court proceedings, Advocate Hiren Kamod, representing the petitioners, informed the Court that they had submitted detailed arguments in their response, demonstrating that their mark was distinct. He also mentioned that various authorities were cited to support the petitioners’ case, including the fact that the mark had been registered in Europe and New Zealand.
Furthermore, he stated that there were additional arguments demonstrating that the petitioner’s mark was distinct in terms of pronunciation, visual appearance, and structure when compared to the marks mentioned in the contested order.
On the opposing side, advocate Shreyas Deshpande representing the Registrar of Trade Marks argued that the order justified its reasoning by pointing out that the cited marks were identical and pertained to similar goods and services, which could potentially confuse the public. He contended that the presence of the words “I am” in both the petitioner’s mark and the cited marks could lead to confusion, thereby supporting the order being challenged.
After careful consideration of the submissions, the Court found merit in the petitioner’s arguments. It noted that the submissions provided by the petitioner were detailed and emphasized the fact that the mark had been successfully registered in Europe and New Zealand.
Additionally, the Court observed that the petitioner’s claim of uniqueness had been put forth after thorough thought and deliberation, creating the impression of a distinctive trademark.
Subsequently, the Court highlighted that the challenged order failed to acknowledge the submissions and authorities presented by the petitioner. It noted that the Senior Examiner had not independently applied their mind, rendering the order devoid of reasoning.
According to the Court, “The least expected of the Officer adjudicating the application is to peruse the reply and extend to it the bare courtesy of application of mind. There is complete abdication by the Registrar of Trade Marks / Senior Examiner of Trade Marks in quasi judicial functions vested in them by the Trade Marks Act and Trade Marks Rules. The impugned order reduces Section 18(5) of the Trade Marks Act to a redundancy.”
Consequently, the Court invalidated the challenged order and referred the matter back for a reassessment of the submissions and evidence supporting the petitioner’s case. The Court instructed that a reasoned order be issued within a period of eight weeks.
