IN THE HIGH COURT OF JUDICATURE AT MADRAS DATED :-30.06.2011 Coram The HONOURABLE MR.M.Y.EQBAL THE CHIEF JUSTICE and The HONOURABLE MR. JUSTICE T.S.SIVAGNANAM W.P.No.15604 of 2010 Eco Lean Research & Development A/S .. Petitioner vs. 1.Intellectual Property Appellate Board Guna Complex, Annex – 1 2nd floor, 443, Anna Salai, Teynampet, Chennai 600 018. 2.The Asst. Registrar of Trade Marks Trade Mark Registry IP Building, GST Road Guindy, Chennai 600 032. .. Respondents PRAYER : Writ Petition filed under Article 226 of the Constitution for issuance of a writ of certiorarified mandamus to call for the records of the first respondent in O.A.No.53/2008/TM/CH dated 19.3.2010 and quash the same and direct the second respondent to register the application No.137522 of the petitioner dated 3.8.2005. For Petitioner :Mr.P.Rajesh For Respondents :Tribunal – R1 Mr.Girish Neelakantan for Mr.J.Ravindran Assistant Solicitor General for – R2 ***** O R D E R THE HON'BLE THE CHIEF JUSTICE & T.S.SIVAGNANAM, J. The challenge in this Writ Petition is to an order passed by the Intellectual Property Appellate Board, (IPAB) in proceedings O.A.No.53/2008/TM/CH dated 19.3.2010, confirming the order passed by the second respondent, refusing the application of the petitioner https://hcservices.ecourts.gov.in/hcservices/ for registration of a trade mark, under Sections 9 & 11 of the Trade Mark Act, 1999, (hereinafter referred to as the 'Act'). 2.The facts of the case lie in a narrow campus. The petitioner filed an Application on 03.08.2005, before the second respondent for registration of a Trade Mark for different classes of goods under section 18 of the Act, for the mark of 'ECOLEAN' under classes 1,7, 16, 17,20 & 42. It appears that the said application was examined by the second respondent and objections for registration was raised under sections 9 and 11 of the Act. The petitioner filed their reply to the objections, the second respondent afforded an opportunity of personal hearing on 5.7.2007 and the second respondent by an order dated 6.2.2008, refused registration of the application under sections 9 & 11 of the Act. Against the said order, the petitioner preferred an appeal before the IPAB under section 91 of the Act. The Tribunal by order dated 19.03.2010, dismissed the appeal. Challenging the same, the petitioner is before this Court by way of this Writ Petition. 3.The learned counsel appearing for the petitioner submits that the second respondent failed to take note of the vital issue that the prefix of “ECO” is common and the suffix of the subject trade mark is different from the suffix of the cited trademarks and that the second respondent ought to have taken note of the fact that the subject mark has been registered in Canada and has been registered in CTM on 8.12.1999, which is valid in all 25 member States of the European Community, including Great Britain. 4.The learned counsel further submitted that goods of the special mark is entirely different from the mark stated in the grounds of decision and the order passed by the second respondent is in violation of the principles of law and the provisions of the Act. The learned counsel would further contend that the second respondent erred in not allowing the application to be advertised and before receiving any objections erroneously rejected their claim. On merits, the learned counsel would submit that the Trade Mark ‘ECOLEAN’ is a coined word and it is part of the name of the company. That no finding has been given with regard to the objections under section 9 of the Act. That the order does not state under which sub-section of Section11 of the Act, the same is rejected. In support of his submissions, the learned counsel placed reliance on the decision of the Hon'ble Supreme Court in F.HOFFMANN- LA ROCHE &CO. LTD. Vs. GEOFFREY MANNER & CO. PVT. LTD. Reported in 1969 (2) SCC 716. 5.The learned counsel appearing for the second respondent by relying upon the counter affidavit would submit that opportunity was granted to the petitioner before the order was passed; principles of natural justice were followed and the second respondent being a formal party to this writ petition, do not wish https://hcservices.ecourts.gov.in/hcservices/ to comment upon the impugned decision and would submit that the order passed by the second respondent is in accordance with the procedure. It is further stated in the counter affidavit that they would abide by the orders passed by this Court. 6.Heard the learned counsels for the parties and perused the materials available on record. 7.The petitioner filed a single application for registration of the Trade Mark for different classes of goods in Form TM-51 for the mark ‘ECOLEAN’. The application was made under:- class 1:Plastic materials in the form of plastic raw material for industrial use; class 7:Machines for the manufacture of packing materials, packages, packings etc; class 16:Plastic materials for packaging (not included in other classes) in the shape of rolls, etc; class 17:Sealing and stuffing materials of plastics etc.; class 20:Containers and packages such as boxes, sacks, cups, etc; class 42: Design of packages and materials for packaging and wrapping etc; The registration was sought for in the name of Ecolean Research Lab and Development A/S, at Denmark. The Application was examined and the examination report dated 06.12.2005 containing the objections to the acceptance of the application for registration was communicated to the petitioner. The petitioner sought for a personal hearing in the matter, which was granted on 5.7.2007 and the petitioner also filed their objections. The second respondent after hearing the petitioner, refused registration of the trade mark under sections 9 and11 of the Act and intimation in this regard was sent to the petitioner on 6.12.2007. The petitioner was further informed that as per Rule 40(1) of the Trade Mark Rules 2002, the grounds of refusal can be obtained by filing request on Form TM-51 with prescribed fee within 30 days. The petitioner made a request of Form TM-51 and the grounds of rejection/decision was communicated. 8. The Application was rejected on the ground that there are four identical/similar trade mark in respect of the same/similar goods which are already there on record in the name of other persons, and that there exists a likelyhood of confusion because of identity/ similarities of earlier trade mark and identity of similarity of goods covered by such mark, therefore the application is refused under section11 of the Act. It is seen that in the https://hcservices.ecourts.gov.in/hcservices/ intimation given on 6.12.2007, the petitioner was informed that the application has been refused under sections 9 and 11 of the Act. However, in the grounds of rejection, it is seen that the Application came to be rejected under section 11 of the Act and not under section 9 of the Act. Further, it is seen that the order passed by the second respondent does not specifically state as to whether the Application has been rejected either under section 11 (1) or 11(2), though section 11(1) of the Act alone has been extracted by the second respondent. 9. The petitioner preferred an appeal before the first respondent Tribunal under section 91 of the Act. Before the Tribunal, the petitioner contended that the second respondent did not afford an opportunity of hearing and therefore the order is in violation of principles of natural justice. Secondly, it was contended that the suffix of the subject trade mark is different from the suffix of the cited trade marks and that the subject trade mark has been registered in Canada and other countries and it is entirely different from the marks stated in the grounds of decision of the second respondent. The Tribunal considered the matter and held that the petitioner was afforded an opportunity by the second respondent before the passing the order and therefore the first ground raised by the petitioner was rejected. On the other ground, the Tribunal came to the conclusion that the mark has to be considered as a whole and the marks are phonetically similar and there is every possibility of confusion. On the third ground viz. registration of mark in Canada, the Tribunal held that mere registration in other countries will not qualify the impugned trade mark to be registered in India. 10. Section 11 deals with the relative grounds for refusal of registration. Sub-section 1 of Section 11 states that as provided under section 12, a trade mark shall not be registered if, because of -- (a)its identity with an earlier trade mark and similarity of goods or services covered by the trade mark; or (b)its similarity to an earlier trade mark and the identity or similarity or the goods or services covered by the trade mark, there exists a likelyhood of confusion on the part of the public, which includes the likehood of association with the earlier trade mark. https://hcservices.ecourts.gov.in/hcservices/ 10(i) Sub section 2 of section 11 of the Act states that a trade mark which -- (a)is identical with or similar to an earlier trade mark; and (b) is to be registered for goods or services which are not similar to those for which the earlier trade mark is registered in the name of a different proprietor, shall not be registered if or to the extent the earlier trade mark is a well-known trade mark in India and the use of the later mark without due cause would take unfair advantage of or be detrimental to the distinctive character or repute of the earlier trade mark. 10(ii) Sub section 3 of section 11 states that the trade mark shall not be registered if, or to the extent that, its use in India is liable to be prevented -- (a)by virtue of any law in particular the law of passing off protecting unregistered trade mark used in the course of trade; or (b)by virtue of law of copyright. 10(iii) Sub-section 4 of Section 11 of Act prevents the registration of a trademark where the proprietor of an earlier trade mark consents. However, in the instant case, we are not concerned with the said provision. 10(iv) Sub-section 5 of section 11 states that a trade mark shall not be refused on the ground specified in sub-sections (2) and (3) of Section 11 unless objection of any one or more of those grounds is raised in opposition proceedings by the proprietor of the earlier trade mark. 10(v) Thus broadly speaking, to invoke Section 11(1), the Registrar is required to see whether the mark is identical or similar to an earlier trademark and the goods are identical or similar to the goods of the earlier trademark and under Section 11 (2), whether the mark is identical or similar to an earlier mark and use of such a mark would allow the applicant to gain unfair advantage or cause damage to the earlier mark though the goods may not be similar. https://hcservices.ecourts.gov.in/hcservices/ 11. As noticed above, the intimation given to the petitioner at the first instance by the Trade Mark Registry on 6.12.2007 is by stating that the registration has been refused under sections 9 and 11 of the Act. However, in the grounds of decision, the order proceeds only under section 11 and not under sections 9 and 11 of the Act. 12. Though in the order passed by the second respondent, section 11(1) of the Act has been extracted, yet, in the operative portion of the decision it has not been explicitly stated as to whether the application was rejected under sub-section (1) or (2) of Section 11 of the Act. If the application was rejected under sub-section (2) of section 11 then such rejection could have been made only after the objections of any one or more of the grounds is raised in the opposition proceedings by the proprietor of a trade mark, which could be done only after the trade mark is advertised in terms of sub-section 5 of section 11. 13. In terms of sub-section (1) of Section 11 of the Act, the second respondent is required to decide whether the identity of the said mark with the earlier trade mark and similarity of goods of services covered by the trade mark as well as its similarity to an earlier trade mark and the identity or similarity of the goods or services covered by the trade mark. Therefore, it appears that from the language of the statue it is not only the identity of the earlier mark, but also similarity of the goods or services covered by the mark. It may be noted that the expression "and" has been used in Section 11(1) of the Act. However, this aspect of the matter appears to have not been raised before the Tribunal. Yet we are of the view that this being the legal issue, the petitioner should be afforded an opportunity to raise such contentions. 14.In our view, if this question is examined by the second respondent, then it would become necessary for the registering authority to not only examine as regards the similarity to an earlier mark, but the similarity of the goods as well and see as to whether there exists a likelyhood of confusion on the part of the public which includes likelyhood of association of the earlier trade mark. In that view of the matter, we are satisfied that the petitioner should be afforded an opportunity to agitate these issues before the second respondent, for which purpose, the matter has to be remanded to the second respondent for fresh consideration on merits. 15. As noticed above, the petitioner raised only three contentions before the Tribunal and did not specifically raise the legal contention as to the manner in which the Registrar has to https://hcservices.ecourts.gov.in/hcservices/ construe an application for registration for a Trade Mark. Yet, in our considered view since it is a legal issue, which would go to the root of the matter, we are persuaded to make certain observations. 16.The Supreme Court in N.S.Thread Co. vs. James Chadwick & Bros. [AIR 1953 SC 357] was considering an appeal arising out of a Judgment of the Division Bench of the High Court of Judicature at Bombay, reversing the Judgment of the learned Single Judge and restoring the order of Registrar of Trade Marks refusing to register the appellants Trade Marks. The case arose under the Trade Marks Act, 1940. Among other questions, the Supreme Court considered the scope of Section 8 and Section 11 of the 1940 Act, and held thus:- 21. As regards the merits of the case we are in entire agreement with the decision of the High Court and with the reasons given in that decision. The relevant part of Section 8 of the Trade Marks Act is in these terms: “No trade mark nor part of a trade mark shall be registered which consists of, or contains, any scandalous design, or any matter the use of which would by reason of its being likely to deceive or to cause confusion or otherwise, be disentitled to protection in a court of justice.” Under this section an application made to register a trade mark which is likely to deceive or to cause confusion has to be refused notwithstanding the fact that the mark might have no identity or close resemblance with any other trade mark. The Registrar has to come to a conclusion on this point independently of making any comparison of the mark with any other registered trade mark. What the Registrar has to see is whether looking at the circumstances of the case a particular trade mark is likely to deceive or to cause confusion.(emphasis supplied) 22.... The real question to decide in such cases is to see as to how a purchaser, who must be looked upon as an average man of ordinary intelligence, would react to a particular trade mark, what association he would form by looking at the trade mark, and in what respect he would connect the trade mark with the goods which he would be purchasing. 24.The considerations relevant in a passing off action are somewhat different than they are on an application made for registration of a mark under the Trade Marks Act and that being so the decision of the Madras High Court referred to above could not be considered as relevant on the questions that the Registrar had to decide under the provisions of the Act. (emphasis supplied) https://hcservices.ecourts.gov.in/hcservices/ 17. As noticed above, the Supreme Court observed that the considerations relevant in a passing of action are somewhat different than they are on an application made for registration of a mark under the Trade Marks Act and therefore, the decision of a Court in a passing off action cannot be considered as relevant while deciding an application under Section 8 of the 1940 Act. 18. In a more recent decision of the Supreme Court in Khoday Distilleries Limited vs. Scotch Whisky Association and others [ (2008) 10 SCC 723], the Supreme Court laid down the test to decide the question of deceptive similarity and their Lordship's held as follows:- 75. The tests which are, therefore, required to be applied in each case would be different. Each word must be taken separately. They should be judged by their look and by their sound and must consider the goods to which they are to be applied. Nature and kind of customers who would likely to buy goods must also be considered. Surrounding circumstances play an important factor. What would be likely to happen if each of those trade marks is used in a normal way as a trade mark of the goods of the respective owners of the marks would also be a relevant factor. (See Pianotist Co.—s Application, Re31.) 76. Thus, when and how a person would likely to be confused is a very relevant consideration. (emphasis supplied) 19.Thus one of the test, which has to be applied while considering the question of deceptive similarity is to take note of the goods to which they are to be applied and nature and kind of customers, who would likely to buy the goods. 20. From a perusal of the order passed by the second respondent, it is clear that the second respondent has failed to advert into these tests laid down by the Supreme Court in the aforementioned decisions and appears to have been solely guided by the tests which are normally applied in a passing off action. It is to be borne in mind that the rights created under the Act are civil rights for the protection of persons carrying on trade under marks which have acquired reputation and the Act and the statute creates the Registrar for safeguarding the rights and for giving effect to the rights created by the Act. Therefore, we are of the view that the second respondent has to bear the above principles in mind, while examining an application under Section 9 & Section 11 of the Act. With these observations, the matter is to be remitted to the second respondent for fresh consideration. https://hcservices.ecourts.gov.in/hcservices/ 21.In the result, the Writ Petition is allowed, the orders passed by the respondents are set aside and the matter is remitted to the second respondent for fresh consideration. It will be open to the petitioner to file their additional objections, if any, and thereafter the second respondent shall afford an opportunity of personal hearing to the petitioner and pass a reasoned order. No costs. rpa/pbn Sd/- Asst. Registrar //True Copy// Sub Asst. Registrar To 1.Intellectual Property Appellate Board Guna Complex Annex – 1 2nd floor, 443, Anna Salai, Teynampet, Chennai 600 018. 2.The Asst. Registrar of Trade Marks Trade Mark Registry IP Building, GST Road Guindy, Chennai 600 032. Copy to: The Section Officer, VR Section, High Court, Madras. + 1 cc to Mr. R. Rajesh, Advocate SR No.38111 + 1 cc to Mr. J. Ravindran, Advocate SR No.37955 PA(CO) SR/6.7.2011 Order in W.P.No.15604 of 2010 https://hcservices.ecourts.gov.in/hcservices/