The Delhi High Court has ruled that the Registrar of Trademarks should examine "exceptional circumstances" as defined in Section 12 of the Trade Marks Act, 1999 before rejecting applications for mark registration lodged with it.
Section 12 allows several proprietors to register identical or similar trademarks for the same or similar goods or services if there is "honest concurrent use" or "other extraordinary circumstances" that the Registrar deems appropriate.
Under Section 11(1)(a) and (b) of the Trade Marks Act, the Registrar rejected KEI Industries' applications 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'.
The Registrar stated that the mark in question is phonetically and aesthetically similar to the conflicting marks indicated in the search report, which were in earlier use in relation to identical commodities for which the Appellant sought registration. It stated that permitting the Appellant's mark to be registered would be detrimental to public interest since it would cause confusion among buyers of ordinary intelligence and impaired recollection.
The Appellant contended that the Tribunal erred in refusing registration by ignoring the fact that the Appellant's tradename/corporate name, 'KEI,' has been in use since 1968, much earlier to the usage claimed by any of the proprietors of the mentioned mark.
Nonetheless, it agreed that the matter be remanded to the Registrar for consideration under Section 12's "exceptional circumstances."
After allowing the Appellant to file an affidavit to show the period of prior use compared to the cited mark on the basis of the search report, Justice Jyoti Singh observed that the Registrar should have at least considered whether the Appellant's case fell under the'special circumstances' provided under Section 12 of the Act.
"The Act contemplates a situation in which a trademark intended to be registered, despite being identical or similar to a specified mark, can be registered due to honest concurrent usage or other'special circumstances.' The impugned orders clearly do not reflect even a consideration of the Appellant's claim raised under Section 12 of the Act, and hence, in my opinion, learned counsel for the Appellant is correct that the matters deserve to be remanded on this limited point ".
Comments