Registrar Should Consider 'Special Circumstances' U/S 12 Trade Marks Act Before Declining Applications For Registration: Delhi High Court

The Delhi High Court has observed that the Registrar of Trademarks should consider 'special circumstances' mentioned under Section 12 of the Trade Marks Act, 1999 before rejecting the applications filed with it seeking registration of marks.Section 12 permits registration of identical or similar trademarks in respect of the same or similar goods or services, by more than one proprietor, in case of "honest concurrent use" or in "other special circumstances" which in the opinion of the Registrar, make it proper so to do.In the instant case, the Registrar had rejected the applications filed by KEI Industries for registration of the trademark 'KEI' in relation to goods specified as 'apparatus for lighting, heating, steam generating, cooking, refrigerating, dry ventilation, water supply and sanitary purposes', under Section 11(1)(a) and (b) of Trade Marks Act.The Registrar said that the mark in question is phonetically and visually similar to the conflicting marks mentioned in the search report, which were in prior use in respect of identical goods for which registration was sought by the Appellant. It said that allowing the registration of the Appellant's mark would adversely affect public interest as it would lead to confusion amongst a buyer of average intelligence and imperfect recollection. The Appellant argued that Tribunal has erred in refusing registration overlooking the fact that the tradename/corporate name of the Appellant 'KEI' has been in use since 1968 i.e. much prior to the use claimed by any of the proprietors of the cited mark.Nonetheless, it agreed that the matter be remanded back to the Registrar for consideration under 'special circumstances' under Section 12.Justice Jyoti Singh observed that the Registrar ought to have at least considered if the case of the Appellant fell under 'special circumstances' provided under Section 12 of the Act, after permitting the Appellant to file an affidavit to show the period of prior use compared to the cited marks on the basis of the search report."The Act envisages a situation where despite a trademark sought to be registered being identical or similar to a cited mark can be registered in case of honest concurrent use or any other 'special circumstances'. The impugned orders indisputably do not reflect even a consideration of the ground taken by the Appellant under the provisions of Section 12 of the Act and therefore, in my view, learned counsel for the Appellant is right that the matters deserve to be remanded on this limited issue," it held.CASE TITLE: KEI INDUSTRIES LIMITED Vs. THE REGISTRAR OF TRADE MARKSCitation: 2022 LiveLaw (Del) 832 Click Here To Read/Download Judgment

Registrar Should Consider 'Special Circumstances' U/S 12 Trade Marks Act Before Declining Applications For Registration: Delhi High Court

EKTA RATHORE

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