LITE BITE TRAVEL FOODS PRIVATE LIMITED Vs THE REGISTRAR OF TRADEMARKS -Judgment by Delhi High Court
$~78 (Original)
* IN THE HIGH COURT OF DELHI AT NEW DELHI
+ C.A.(COMM.IPD-TM) 4/2021
LITE BITE TRAVEL FOODS PRIVATE LIMITED
….. Appellant
Through: Mr. Manish Dhir, Adv.
versus
THE REGISTRAR OF TRADEMARKS ….. Respondent
Through: Mr. Srish Kumar Mishra, Mr. Sagar Mehlawat and Mr. Alexander Mathai Paikaday, Advs.
CORAM:
HON’BLE MR. JUSTICE C.HARI SHANKAR
O R D E R (ORAL)
% 18.01.2023
1. The appellant is aggrieved by the order dated 7th January 2021, passed by the learned Deputy Registrar of Trade Marks (�the learned Deputy Registrar�) whereby the application of the appellant for registration of the device mark has been rejected.
2. The impugned order reads thus:
�IN THE MATTER OF Application No 3928838
for registration of a trade mark Oasis Lounge By Lite Bite Travel Foods filed by LITE BITE TRAVEL FOODS PRIVATE LIMITED..
????/O R D E R
Above application has been filed for registration of the trademark Oasis Lounge By Lite Bite Travel Foods on 28/08/2018 which was examined on 29/09/2018 and examination report was communicated to the applicant at his address for service. A reply to the office objection(s) had been filed on behalf of the applicant but the same was not found satisfactory and the application was set down for hearing and eventually hearing took place before me on 09/11/2020.
Adv. Manish Dhir Attorney appeared before me and made his/her submissions. I have heard arguments and gone through the records.
Office objection u/sec. 11 (1) raised against the applied mark.
Ld. Counsel submits mark as a whole different. Applicant is using the mark.
Heard the Ld. Counsel and perused the record.
Leading/Dominant feature of the applied mark is OASIS found common and similar to TM Nos. 2045465 and 3131397. Services also similar. No explanation regarding adoption. Mark filed as proposed to be used. Evidence of use subsequent to date of application. Can’t be considered. Given, marks are remembered by broad expression, to my mind there is likelihood of confusion between applied mark and the said cited conflicting marks. Objection sustained. Application refused.
After perusal of all the documents on record and submission made by the applicant / authorised agent it is concluded that applied mark is not registrable because of the reason stated as above. Hence application no 3928838 cannot be accepted and refused accordingly.
?? ??? ?/Dated: 07 January 2021.
(SACHIN SHARMA)
?????? ???????, ??????? ?????/DEPUTY REGISTRAR
OF TRADE MARKS
(??????? ?? 3 (2) ?? ??? ?????????)/(/Authorized
under 3(2) of the Act)�
3. The applicant applied for registration of the device mark on 28th August 2018. The applicant sought registration of the said mark in respect of services provided in restaurants, self-service restaurants, services for providing food and drink, bar services, snakc-bars and cafes. Registration was sought on a �proposed to be used� basis, as a Service Provider.
4. Consequent on examination, the Examiner in the office of the Regsitrar of Trade Marks, vide his First Examination Report (FER), dated 29th September 2018, opined that the application of the appellant was �open to objection on relative grounds of refusal under Section 11 of the Trade Marks Act�, as �same/similar trade mark(s) is/are already on record of the register for the same or similar goods/services�.
5. The report purported to enclose details of the earlier existing trademarks, on the basis of which the Examiner had opined that the application of the appellant merited rejection.
6. The details of the earlier registered marks, constituting the basis of the objections raised by the Examiner, as enclosed with the FER, may be reproduced thus:
GOVERNMENT OF INDIA
TRADE MARKS REGISTRY
LOCATION:
SECTION: EXM
REPORT: EXM007
WORD MARK SEARCH REPORT
APPLICATION NUMBER: 3928838
Class: —
TRADEMARK: ‘Oasis Lounge By Lite Bite Travel Foods
USER: STK
PAGE:1
DATE: 17/09/2018
APPL
NO
CLASS
CONFLICTING
MARK
JOURNAL
No
PROPRIETOR NAME
PROPRIETOR
ADDRESS
STATUS
TM IMAGE
2045465
43
OASIS
1660
CAPSULATION
SERVICES PVT. LTD.
CAPSULATION
PREMISES, DEONAR,
SION-TROMBAY ROAD,
OPP. TATA SOCIAL
INSTITUTE, MUMBAI-
400088
Registered
APPLICATION DATE 27/10/2010
GOODS/SERVICE CATERING SERVICES, PROVIDING OF FOODS AND DRINKS AND RESTAURANT SERVICES
3131397
43
OASIS
GOYAL FASHIONS PVT.
LTD..
GOYAL HOUSE 24,
AJMER ROAD, JAIPUR,
RAJASTHAN, INDIA
Objected
APPLICATION DATE 19/12/2015
15:40:31
GOODS/SERVICE SERVICES FOR PROVIDING FOOD AND DRINK; RESTAURANTS, BAR, LOUNGE, TEMPORARY ACCOMMODATION, BANQUET, HOSPITALITY, HOTEL AND RESORT SERVICES.
3600149
43
NIKESH KISHOR GALA
3/468 A, Kalyan Bhuvan,
Maheshwari Udhyaan,
Matunga East, Mumbai –
400019. Maharashtra.
Objected
APPLICATION DATE 27/07/2017
11:34:06
GOODS/SERVICE Hotel; Motel; Restaurants; Self-Service Restaurant; Quick Service Restaurant; Bar Services; Cafe; Cafeteria; Canteen; Snack Bar; Food Court; Lounge; Take Away; Dine In; Food cart; Food Truck; Services for Providing Food, Drink, Beverage and Temporary Accommodation; Food, Drink and Beverage Catering; Rental of Furniture, Linens, Utensils, Table, Cooking apparatus, Lighting apparatus and other apparatus.
7. The appellant submitted a reply, dated 11th February 2020, to the FER of the Examiner, in which it was contended, inter alia, thus:
(i) The appellant had been continuously using the mark for its services and was well known in the industry. A user affidavit of Mr. Sukhpreet Singh, an authorised representative of the appellant, was also filed with the said reply, to vouchsage this contention. The affidavit annexed documents showing use of the trade mark, under which mark, the appellant was running an outlet at the Mumbai International Airport. Placards, signboards and other representations available at the airport, as well as the illuminated signage outside the appellant�s premises at the airport, were also annexed.
(ii) As such, the general public was well aware of the appelalnt�s outlet and invaribly associated the mark with the serivces provided by the appellant.
(iii) The mark relatable to Application No. 3131397 of M/s Goel Fashions Pvt. Ltd. was not registered, as it was under objections. This, therefore, could not constitute an �earlier trade mark� for the purposes of Section 11 (1)(d) of the Trade Marks Act.
(iv) Insofar as the mark of M/s Capsulation Services Pvt. Ltd. (�Capsulation Services�) was concerned, the appellant claimed to be a bona fide adopter and user of the trade mark, who, by virtue of the extensive usage of the said mark, had earned its own reputation and goodwill and made a place for itself in the hospitality market.
(v) The services provided by the appellant, under the mark were different from the services provided by capsulation services under the mark.
(vi) There was, therefore, no likelihood of confusion, if any, between mark of the appellant and the mark of Capsulation Services, resulting in any confusion in the mind of the public, with respect to the entity with which the mark was associated or the services provided thereunder.
(vii) The marks, seen as a whole, were clearly distinguishable. The appellant�s mark was whereas the mark of Capsulation Services, was . Besides, the marks were visually completely distintinct and constituted disntinct artistic representations.
(viii) The appellant had never been communicated any objection or any other communication by anyone who claimed to have been confused as result of the adoption, by the appellant, of the mark, for the registration of which the application had been filed.
8. I have heard Mr. Manish Dhir, learned Counsel for the appellant and Mr. Srish Kumar Mishra, learned Counsel for the respondent at some length.
9. Plainly, the impugned order does not consider the various grounds urged by the appellant in its reply dated 11th February 2020 to the FER dated 29th September 2018. There is, equally, no reflection of any consideration of the affidavit of Mr. Sukhpreet Singh or the material that was filed therewith.
10. In fact, the learned Deputy Registrar has, it appears, proceeded on a complete misreading of Section 11(1)(b) of the Trade Marks Act. The impugned order reflects the view that mere similarity of the marks, of which registration is sought, is, by itself, sufficient as a ground to reject the application seeking registration. That, however, is not the position as it obtains in law. Even statutorily, Section 11(1)((b) is subject to two other provisions/caveats.
11. Section 11(1) starts with the words �save as provided in Section 12�. Section 12, therefore, operates as an exception to Section 11(1). Section 12 deals with entitlement to registration where, despite similarity of the marks, the applicant pleads honest and concurrent user. In the present case, the appellant has specifically pleaded honest and concurrent user. There is no reflection of any application of mind by the learned Registrar of Trademarks to the said contention.
12. Additionally, similarity of the mark, of which registration is sought, coupled with identity or similarity of the goods or services covered by the said mark can constitute a basis for rejection of an application seeking registration of the mark, under Section 11(1)(b) only where, because of such similarity between the marks and identity and similarity of goods or services covered by the marks, there exists a likelihood of confusion on the part of the public or of the public associating the mark, of which registration is sought, with the earlier trade mark.
13. The existence, or otherwise, of likelihood of confusion is an issue of fact. Until and unless, on facts, it is established that, owing to identity/similarity of the mark of which registration is sought, and of the goods/services covered thereby, with an earlier mark, there is likelihood of confusion/association in the mind of the public, registration cannot be refused on that ground.
14. In the event that Section 11(1)(b) is stated as a ground for rejection of an application seeking registration of a mark, therefore, the impugned order must additionally contain a finding that, owing to similarity of the mark of which registration is sought with an earlier trade mark and identity/similarity of the goods and services covered by the said mark, there is a positive likelihood of confusion/association, on the part of the public, as envisaged by the provision. Such a finding can be returned only after examining the facts and the material on record. It cannot merely be chanted as a mantra.
15. The appellant has raised several contentions in its reply dated 11th February 2020 to the FER dated 29th September 2018. Additionally, an affidavit of Mr. Sukhpreet Singh, along with material substantiating the contentions raised in the reply, was also filed, and the impugned order does not reflect any examination or consideration of the submissions contained in the reply dated 11th February 2020, the affidavit of Mr. Sukhpreet Singh or the documents filed with the affidavit, I deem it appropriate that the matter be remanded to the learned Registrar of Trademarks for re-consideration.
Conclusion
16. Resultantly, the impugned order dated 7th January 2021 is quashed and set aside. The Application no. 3928838 dated 28th August 2018 filed by the appellant for registration of the mark is remanded for re-consideration, from the stage of submission, by the appellant, of its reply dated 11th February 2020 to the FER dated 29th September 2018 of the Examiner.
17. The appellant would be entitled to an opportunity of personal hearing before a decision is taken. In order to expedite matters, the appellant is directed to present itself before the concerned officer on 30th January 2023. The officer concerned is directed to consider the application as expeditiously as possible and take a fresh decision thereon, uninfluenced by impugned order dated 7th January 2021, within a period of four weeks therefrom, and to communicate the said decision to the appellant immediately thereupon.
18. Without casting any aspersion on the learned Deputy Registrar, who passed the impugned order dated 7th January 2021, and keeping in mind the principle that justice should not only be done but must be seen to be done, as enunciated by the Supreme Court in P.V. Narasimha Rao v. State (CBI/SPE)1, the learned Registrar is requested to assign the task of adjudication to an officer other than the officer who has passed the impugned order dated 7th January 2021.
19. It is made clear that this direction is not intended to cast any aspersion on the learned Deputy Registrar who passed the impugned order and is only intended to assuage any apprehension, in the minds of the appellant, that the officer has already pre-determined the issue.
20. The appeal stands allowed accordingly, with no order as to costs.
C. HARI SHANKAR, J.
JANUARY 18, 2023
dsn/AR
1 MANU/SC/2319/1996
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Neutral Citation Number : 2023/DHC/000482
C.A.(COMM.IPD-TM) 4/2021 Page 9 of 9