'Complete Abdication Of Quasi-Judicial Function' By Trademark Registrar Rejecting Application Without Considering Submissions: Bombay High Court

The Bombay High Court recently came down heavily on Registrar of Trade Marks and the Senior Examiner for failing to consider submissions and pass reasoned orders before denying registration of trademarks, calling it a “complete abdication” of their quasi-judicial functions. A single bench of 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. “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 court added that the replies were filed with “application of mind” and the “least expected” was that the adjudicating officer would “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,” Justice Chagla added.In the case at hand, I Am The Ocean, LLC filed a Commercial Miscellaneous Petition seeking to set aside an order of August 23, 2021 passed by the Examiner of Trade Marks, Trade Marks Registry, Mumbai. Advocate Hiren Kamod for the petitioner submitted that after the August order he approached the Senior Examiner claiming that there were no reasons in the order and that it had only referred to Section 11(1) of the Trade Marks Act, 1999 and had further referred to the trademarks cited when the Provisional Trade Mark was refused. On November 9, 2022 the Senior Examiner of Trade Mark passed a replica of the first order without even considering his submissions, Kamod argued.Kamod cited his submissions to argue that his client had made out a case of distinctiveness. Moreover, the trademark was registered in the European Union and New Zealand. The subject mark is completely different in all respects i.e. phonetically, visually and structurally from the cited mark when viewed in its entirety, he submitted. He added that the trademark had to be seen as a whole. Advocate Shreyas Deshpande for the Registrar of Trademarks claimed the order was reasoned. Justice Chagla accepted the petitioner’s submissions that the subject mark should be viewed in its entirety. “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,” the court observed. The judge further noted the Registrar failed to refer to the petitioner’s submissions and the authorities cited weren’t considered before holding that the cited marks are identical / similar having similar goods / services. “There is 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.”Accordingly, the court set aside the Senior Examiner of Trade Marks order and remanded the matter back for reconsideration. Case Title: I Am The Ocean, LLC Vs Registrar Of Trade Marks [Comm Miscellaneous Petition (L) No.3899 Of 2023] Click Here To Read/Download Order

'Complete Abdication Of Quasi-Judicial Function' By Trademark Registrar Rejecting Application Without Considering Submissions: Bombay High Court

Sharmeen Hakim

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