It Is Not Permissible To Compare Competing Trademarks By Dissecting Its Parts: Delhi High Court Rules Against Loreal

While emphasizing that the object of examination is to ensure the compliance of the provisions of the Trademarks Act, the Delhi High Court held that no interference with the registration of the trademark would be warranted, unless it is prima facie established that the registration of the trademark falls foul of the provisions of the Act. The Division Bench of Justice Vibhu Bakhru and Justice Tara Vitasta Ganju observed that “It would not be apposite to cancel the registration of the trademark, in respect of which there are no grounds for refusing registration under the Act, merely because of some error in the procedure adopted by the Registrar at the material time”. Section 9 of the Trade Marks Act, 1999 states that the trademarks — (a) which are devoid of any distinctive character, i.e., to say, not capable of distinguishing the goods or services of one person from those of another person; (b) which consist exclusively of marks or indications which may serve in trade to designate the kind, quality, quantity, intended purpose, values, geographical origin or the time of production of the goods or rendering of the service or other characteristics of the goods or service; (c) which consist exclusively of marks or indications which have become customary in the current language or in the bona fide and established practices of the trade, shall not be registered. Provided, that a trade mark shall not be refused registration if before the date of application for registration it has acquired a distinctive character as a result of the use made of it or is a well-known trade mark. Facts of the case: The appellant is a wholly owned subsidiary of M/s L'Oreal, which acquired it's predecessor company CCPL that had adopted the CLARI formative trademark (which has registered proprietorship of Respondent No.1) as well as impugned trade mark i.e, 'CLARIWASH' in the year 2009 and 2010 respectively. Further the Respondent applied for registration of the trademark in Apr 2010 claiming its usage since Nov, 2009. Pursuant to the error made in the search report of the trademark as CHARIWASH and not CLARIWASH, respondent no.2 issued the corrected Registration Certificate in respect of respondent no.1's application. The appellant sought cancellation of the trademark claiming that its predecessor, CCPL, had honestly adopted CLARI formative marks and had expanded the usage and adoption of those marks from time to time. The appellant also claimed that registration to respondent no.1 was granted based on faulty examination report. However, the Single Judge rejected the said application of the appellant. Observation of the High Court: The Bench observed that the trademarks have to be viewed as a whole and it would not be permissible to compare the competing trademarks by dissecting parts of the trademarks and comparing them. However, in the present case, the Bench found that overall commercial impression of the impugned trademark is not similar to the trademark CLARI-FI. The Bench noted that the Registrar had conducted the search in terms of Rule 33(1) of the Rules while the examination of the application for registration would entail the Registrar to ascertain whether the registration is required to be refused in terms of Section 9 of the Act or for any other grounds u/s 11 of the Act. The Bench found that the trademark was a registerable trademark and there were no grounds to refuse the registration u/s 9 of the Act. The Bench also noted that there was an error in conducting search in as much as the search report indicates that the search was conducted in respect of the mark CHARIWASH instead of CLARIWASH. The Bench therefore observed that unless, prima facie it is established that the impugned trademark is identical or deceptively similar to the trademark in respect of similar or identical goods which were on record, at the material time, the registration of the impugned trademark cannot be faulted. The Bench added that the appellant or its predecessor had full opportunity to oppose the registration of the impugned trademark at the material time. However, they had taken no steps to do so. The Bench further observed that only two trademark applications of CCPL were on record of the Registrar as on the date of the search report – CLARI-FI and CLARIMOIST, and the usage of the impugned trade mark is prima facie prior to CCPL's adoption of the trade mark CLARIMOIST. Thus, the trademark CLARI-FI is clearly not similar to the impugned trademark, added the Bench. Thus, the High Court concluded that respondent no.1's application for registration of the trademark cannot be refused on the ground of the applications filed by CCPL for registration of its trademark CLARI-FI and CLARIMOIST, when the impugned trade mark is also not deceptively similar to CLARIMOIST. Therefore, the High Court dismissed the...

It Is Not Permissible To Compare Competing Trademarks By Dissecting Its Parts: Delhi High Court Rules Against Loreal

Pankaj Bajpai

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