Brief Facts of the case

In this case the Petitioner i.e. Mr. Jai Bhagwan Gupta who owns the Trademark “Jeera Pujari (Word mark)” and “Jai Pujari Brand (label mark)” and have been duly renewed by the petitioner.

Later on he came to know that despite Petitioner’s already registered mark, trademark registry has advertised the respondent’s mark which consist of the word “Pujari ” and fall under the category of identical goods in class 30.

Thereafter petitioner had filed an opposition in the registry with respect to these marks issued but the same had become a burden upon him with respect to the cost of opposition filed and keeping an eye on the trademark journal. 

In the light of the aforesaid, the Petitioner filed the present writ petition against the Respondents and has asked for the relief as follows-

  1. Issue a writ of certiorari quashing the impugned publication of the trademarks of respondent no. 4 and 5 published in the trade mark journals being ANNEXURES P – 4 & 5 as illegal and unconstitutional and proceedings taken towards its registration;
  2. issue a writ of mandamus directing respondents no. 1 and 2 to perform the-official functions in consonance with provisions of law and principles of natural justice and further to desist from publishing trademarks identical with or deceptively similar to petitioner’s trade marks in trade mark journals without following due procedures and provisions of law as envisaged under the Trade Marks Act and Rules there under.”

Issue

Issued before the High Court was whether the acceptance of a trademark or advertisement before acceptance can be granted to trademarks which are similar to the already registered Trademarks?

Observation

Petitioner submitted that, Respondents should examine the Trademark application according to section 9 and 11 of the trademarks Act, 1999, and Trademark application should be analysed in an efficient and proper manner in order to make sure that no such disputes arises in future. 

It was further submitted that Petitioner’s mark “Pujari” was already registered word mark which was for spices under class 30 and similar trademarks under class 30 has been given permission for advertisement for registration.

Respondents in addition submitted that the petitioner had already taken statutory step that is why this present writ petition before Hon’ble High Court is not maintainable as Petitioners had already filed for opposition. 

The court therefore, observed the submissions made and observed that whenever a trademark is filed, the Registrar of Trademark has an obligation to scrutinize the application as per section 9 and 11 of the act which consists of Absolute grounds and relative grounds for refusal of registration of trademark respectively. The registry has to examine all the applications as per the provisions of Trademark act, 1999.

Consequently after examining the mark, the registry would either accept the trademark and advertise the same in the trademark journal or may directly advertise it without accepting the trademark as per the proviso of section 20(1) of the Act.

Section 20 of the Act stipulates as under-

“20. Advertisement of application: (1) When an application for registration of a trade mark has been accepted whether absolutely or subject to conditions or limitations, the Registrar shall, as soon as may be after acceptance, cause the application as accepted together with the conditions or limitations, if any, subject to which it has been accepted, to be advertised in the prescribed manner:

Provided that the Registrar may cause the application to be advertised before acceptance if it relates to a trade mark to which sub-section (1) of section 9 and sub-sections (1) and (2) of section 11 apply, or in any other case where it appears to him that it is expedient by reason of any exceptional circumstances so to do.

(2) Where—

(a) an application has been advertised before acceptance under sub-section (1); or

(b) after advertisement of an application,-

  • an error in the application has been corrected; or
  • the application has been permitted to be amended under section 22,

the Registrar may in his discretion cause the application to be advertised again or in any case falling under clause (b) may, instead of causing the application to be advertised again, notify in the prescribed manner the correction or amendment made in the application.”

Conclusion

Thus the court held that the action has to be performed in exceptional circumstances and not every trademark is advertised before acceptance. Upon scrutiny of trademark and as per various provisions applicable, the Respondent have following options available whenever a trademark application is produced before it-

  1. Accept the mark unconditionally and directly advertise it in Trademark journal.
  2. Accept the mark subject to a condition and direct advertisement in the trademark journal.
  3. Accept the mark subject to a limitation and directly advertise it in the Trademark journal.
  4. Direct the advertisement of the mark in the Trademark journal.
  5. Reject the application at the stage itself if the regisara is of the opinion that the same ought not to proceed for registration due to any of the absolute prohibitions, etc.

The court held that “Under Section 20(1), the Registrar of Trademarks shall quote the reason for directing advertisement before acceptance’ and the same cannot be a ministerial act or a mere formality.”

Therefore, the Court directed that the Respondent shall ensure that whenever marks proceed for advertisement, a specific brief order is passed under Section 20(1) after acceptance for advertisement or under exceptional circumstances, in view of proviso to Section 20(1) for advertisement before acceptance. All marks ought not to be permitted to proceed for advertisement and thereafter for registration.

And therefore the court disposed off the preset Petition filed by the Petitioner.

The experienced team of BIAT Legal LLP would ensure proper Trademark search for availability of marks before its application.

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